Key Changes to IP Legislation by the European Council
In September this year (2023), the European Council announced that it had settled on two central intellectual property agendas to pursue ahead of negotiations with the European Parliament on IP legislation.
The new agendas would to enable key pieces of legislation governing IP law in the European Union to adapt to the fast-evolving digital era. In particular, the EU legislative body proposes to support industrial design creativity by increasing the reach of design protection and expanding EU IP law terminology to include design media emerging out of technological developments (such as 3D printing and metaverse creations). Other objectives introduced by the Council aim to consolidate the reliability and intuitiveness of the design registration administrative process, particularly with respect to deferment periods, appeals, and required documentation.
The Council’s positions adopt measures suggested in a proposal package it released on 18 November 2022. The package was a revision of EU Council regulations on community designs (Regulation (EC) 6/2002) and a directive on the legal protection of designs (98/71/EC), dating back to 2002 and 1998 respectively (more than two whole decades ago!).
Although the Council’s approaches are still subject to negotiation with the EU Parliament, they nevertheless forecast key points of evolution in IP law in Europe and globally of which both IP lawyers and current as well as prospective design registrants should keep abreast. Below, we cover some of the key amendments to IP law suggested by the Council.
Key Objectives
New definitions of ‘design’ and ‘product’ to suit new-age technology
The Council proposes to alter the meaning of the term ‘product’ in its legislation (both the Directive and the Regulation) to include all ‘non-physical’ creations, instead of merely ‘digital’.
The November 2022 proposal in particular frames changes to the terms to capture designs in the metaverse, graphic animation, as well as 3D printing.
Simpler registration requirements
The council also proposes to make representation of a design for the purpose of registration simpler or more flexible. Whereas under current legislation applicants are required to produce key mandatory documents to delineate their design and cannot register their mark until they do so, new IP legislation could allow registration even in the absence of important documentation, so long as the design is sufficiently clear from the representation materials already provided at the time of a registration request.
More flexible publication options
Under current EU IP legislation, design owners may defer the publication of their designs for 30 months. The Council proposes to amend options for deferment so that design owners may defer publication for up to 30 months but may also, in contrast to the current system, stop deferment and publish their design any time before.
New grounds and processes for declaring design rights invalid or designs non-registrable
The Council is aiming to provide in new legislation clarification of how and for what reasons an EU member state may appeal the validity of a design registration.
It has stated in particular that new legislation will establish a new public interest ground of non-registrability enabling member states to prevent the registration of designs that improperly use or misappropriate facets of national cultures, for example, costumes, symbols, artefacts, and monuments.
The legislative body also intends for new legislation to outline a non-litigious (administrative) appeals procedure, to relieve parties of courts costs and processes.
Liberalisation of the EU spare parts market
One of the Council’s most significant proposal objectives is the liberalisation of the spare parts market across Europe. The withdrawal of design protection for myriads of spare parts in the next 10 years is due to have an enormous impact on the automobile and spare parts industries.
What’s Next
Actual changes to EU IP legislation will only come into effect once the European Council and European Parliament come to an agreement on those changes. The Council currently intends to allow EU member states 36 months to integrate the new legislation, although this period too may change after discussions between the EU legislative bodies.
Despite the uncertainty as to how much of the legislative body’s mandate will be absorbed into actual EU IP law, design protection professionals as well as current or prospective design owners can count on IP laws globally moving towards more intuitive and future-technology-oriented registration and protection rules.
If you would like to know more about design registration laws and processes, don’t hesitate to contact Borderless Counsel at info@borderlesscounsel.com.