After the EU Council formally adopted the final version of the Regulation (EU) 2024/2822 and the Design Directive (EU) 2024/2823 on October 10, 2024, namely just in time for our webinar “Digital Bites // The new EU Design Act - fit for digital & virtual content”, both legal acts were published in the Official Journal of the European Union on November 18, 2024 and will now enter into force on December 8, 2024.
A fundamental reform not only in terms of terminology
While the new EU Regulation changes the term “Community Design” to “EU Design”, the scope of protection for designs in particular was also expanded as part of the reform in order to meet the requirements of the digital age. The most important innovation of the two legal acts: design law now also extends to the digital and virtual space without calling traditional principles into question. A “design” continues to protect the appearance of a product or part of a product resulting from the features, in particular the lines, contours, colors, shape, surface texture and/or materials of the product itself and/or its ornamentation.
In order to ensure far-reaching protection in the digital and virtual space as well, the concept of design was extended to include the manifestations of movement, transition or another type of animation of these features. The term “product” previously did not explicitly include digital content. Now, however, the definition refers to all objects, regardless of whether they are in a physical object or digital form, including graphical user interfaces (GUI).
Digital and virtual designs as an opportunity
The new scope of application of design protection opens up a new opportunity to protect products and creative output in many areas. This ranges from apps, digital and virtual spaces/rooms, animated content, gaming content such as skins and tools to 3D CAD models (e.g. used for 3D printing), which was explicitly taken into account in the reform. The EU Design offers cost-efficient, EU-wide protection for creative designs not only to the gaming sector, but to a great variety of companies in the digital industry, while at the same time closing existing protection gaps in the IP portfolio alongside other rights such as trademark and copyright law.
This is flanked by the new presumption of validity for registered designs and for the ownership of the natural or legal person(s) entered in the register.
Registration with open questions
In principle, the registration of a design requires that it can be visibly reproduced in the application. In order to meet the new requirements with regard to digital and virtual space, the representation can be static, dynamic or animated by all suitable means using generally accessible technologies (including drawings, photographs, videos, computer imaging, computer modeling). The details of technical implementation are still unclear. Upload limits, file format restrictions and the like could make registration considerably more difficult. The EUIPO is expected to provide appropriate implementation guidelines here.
Registered Design (D) as a bonus and more
The new introduction of an optional registration notice on the product or packaging (letter “D” in a circle) now also offers the possibility of deterring potential infringers in the area of design law. In addition, the transit of goods infringing design rights through the EU will also be prohibited in future.
Furthermore, the fee structure be slightly different. Applicants must only pay one fee for the EU Design application and no longer a separate fee for publication. Overall, this will not make the application more expensive; however, the fee for renewals will increase after the 5th year. At the same time , the “one-class requirement” for multiple applications will be abolished, making it possible to apply for a combination of designs of different Locarno classes in a more cost-efficient multiple application.
Greater harmonization in the member states
The Design Directive provides for greater harmonization of the application procedures and the scope of protection of designs in the individual member states. In future, the national offices will only examine absolute grounds for refusal in the application procedure. However, an examination of relative grounds for refusal, such as existing prior rights, will no longer be carried out.
The Design Directive also provides for the new presumption of validity for registered designs and for the ownership of the natural or legal person(s) entered in the register. In addition, all member states must now permit the defense of bona fide prior use, the grounds for non-registration and invalidity of national designs shall become mandatory and all member states must in future provide for a repair clause. National protection for non-registered designs will be abolished altogether and will therefore only exist at European level.
Timetable
The new European Union Design Regulation (EU) 2024/2823 will apply in part from May 1, 2025 and in full from July 1, 2026. The member states have until December 9, 2027 to implement the Design Directive (EU) 2024/2822 into national law. Shortly after the publication of the two EU legal acts, the WIPO Design Law Treaty (DLT) was also adopted on November 22, 2024, setting a new international standard for design protection. Core regulations include simplified application procedures, uniform protection periods and clear provisions on application requirements. The treaty thus helps small and medium-sized enterprises in particular, as it is expected to reduce costs, reduce complexity, speed up processing times and provide greater legal predictability and certainty for applicants. This represents an important step forward for international design law as a whole.
Conclusion
The practical effects and new opportunities for entrepreneurs as a result of the reform of EU design law are considerable. It is already worth exploring opportunities to close protection gaps in your own IP portfolio. In our IP Advent calendar, you will find the most important key facts behind door 8.
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