Directive (EU) 2024/2823 of the European Parliament and of the Council of 23 October 2024 on the legal protection of designs (recast) (Text with EEA relevance)

• CELEX: Directive (EU) 2024/2823
• Articles: 41

Article 1 Scope

1.   This Directive applies to:

(a)

design rights registered with the central industrial property offices of the Member States;

(b)

design rights registered at the Benelux Office for Intellectual Property;

(c)

design rights registered under international arrangements which have effect in a Member State;

(d)

applications for the design rights referred to in points (a), (b) and (c).

2.   For the purpose of this Directive, design registration shall also comprise the publication following filing of the design with the industrial property office of a Member State in which such publication has the effect of bringing a design right into existence.

Article 2 Definitions

For the purposes of this Directive, the following definitions apply:

(1)

‘office’ means the central industrial property office of the Member State or the Benelux Office for Intellectual Property, entrusted with the registration of designs;

(2)

‘register’ means the register of designs kept by an office;

(3)

‘design’ means the appearance of the whole or a part of a product resulting from the features, in particular the lines, contours, colours, shape, texture and/or materials, of the product itself and/or of its decoration, including the movement, transition or any other sort of animation of those features;

(4)

‘product’ means any industrial or handicraft item other than a computer program, regardless of whether it is embodied in a physical object or materialises in a non-physical form, including:

(a)

packaging, sets of articles, spatial arrangements of items intended to form an interior or exterior environment, and parts intended to be assembled into a complex product;

(b)

graphic works or symbols, logos, surface patterns, typographic typefaces, and graphical user interfaces;

(5)

‘complex product’ means a product that is composed of multiple components which can be replaced, permitting disassembly and reassembly of the product.

Article 3 Protection requirements

1.   Member States shall protect designs solely through the registration of those designs, and shall confer exclusive rights upon their holders in accordance with this Directive.

2.   A design shall be protected by a design right if it is new and has individual character.

3.   A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:

(a)

if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and

(b)

to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.

4.   ‘Normal use’ within the meaning of paragraph 3, point (a), shall mean use by the end user, excluding maintenance, servicing or repair work.

Article 4 Novelty

A design shall be considered new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. Designs shall be deemed to be identical if their features differ only in immaterial details.

Article 5 Individual character

1.   A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority.

2.   In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

Article 6 Disclosure

1.   For the purpose of applying Articles 4 and 5, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Union, before the date of filing of the application for registration or, if priority is claimed, the date of priority. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

2.   A disclosure shall not be taken into consideration for the purpose of applying Articles 4 and 5 if the disclosed design, which is identical or does not differ in its overall impression from the design for which protection is claimed under a registered design right of a Member State, has been made available to the public:

(a)

by the designer, the designer’s successor in title, or a third person as a result of information provided or action taken by the designer, or the designer’s successor in title; and

(b)

during the 12-month period preceding the date of filing of the application or, if priority is claimed, the date of priority.

3.   Paragraph 2 shall also apply if the design has been made available to the public as a consequence of an abuse in relation to the designer or the designer’s successor in title.

Article 7 Designs dictated by their technical function and designs of interconnections

1.   A design right shall not subsist in features of appearance of a product which are solely dictated by its technical function.

2.   A design right shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function.

3.   Notwithstanding paragraph 2 of this Article, a design right shall, under the conditions set out in Articles 4 and 5, subsist in a design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.

Article 8 Designs contrary to public policy or morality

A design right shall not subsist in a design which is contrary to public policy or to accepted principles of morality.

Article 9 Scope of protection

1.   The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression.

2.   In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

Article 10 Commencement and term of protection

1.   Protection of a design right shall arise upon registration by the office.

2.   A design shall be registered for a period of five years calculated from the date of filing of the application for registration. The right holder may renew the registration, in accordance with Article 32, for one or more periods of five years each, up to a total term of protection of 25 years from the date of filing of the application for registration.

Article 11 Right to the registered design

1.   The right to the registered design shall vest in the designer or the designer’s successor in title.

2.   If two or more persons have jointly developed the design, the right to the registered design shall vest in them jointly.

3.   However, the right to the registered design shall vest in the employer where a design is developed by an employee in the execution of the employee’s duties or following the instructions given by the employee’s employer, unless otherwise agreed between the parties concerned or laid down in national law.

Article 12 Presumption in favour of the registered holder of the design

The person in whose name the design right is registered, or, prior to registration, the person in whose name the application is filed, shall be deemed to be the person entitled to act in any proceedings before the office in the territory of which protection is claimed as well as in any other proceedings.

Article 13 Grounds for non-registrability

1.   A design shall be refused registration where:

(a)

the design is not a design within the meaning of Article 2, point (3);

(b)

the design is contrary to public policy or to accepted principles of morality, as provided for in Article 8; or

(c)

the design constitutes an improper use of any of the items listed in Article 6ter of the Paris Convention for the Protection of Industrial Property, unless the consent of the competent authorities to the registration has been given.

2.   Member States may provide that a design is to be refused registration where the design constitutes an improper use of badges, emblems and escutcheons other than those covered by Article 6ter of the Paris Convention and which are of a particular public interest in the Member State concerned, unless the consent of the competent authority to its registration has been given in conformity with the law of the Member State.

3.   Member States may provide that a design is to be refused registration where it contains a total or partial reproduction of elements belonging to cultural heritage that are of national interest.

Article 14 Grounds for invalidity

1.   If the design has been registered, the design right shall be declared invalid in any of the following situations:

(a)

the design is not a design within the meaning of Article 2, point (3);

(b)

the design does not fulfil the requirements provided for in Articles 3 to 8;

(c)

the design has been registered in breach of Article 13(1), point (c), or of Article 13(2);

(d)

by virtue of a decision of the competent court or authority, the holder of the design right is not entitled to it under the law of the Member State concerned;

(e)

the design is in conflict with a prior design which has been made available to the public prior to or after the date of filing of the application or, if priority is claimed, the date of priority of the design, and which is protected from a date prior to the date of filing of the application, or if priority is claimed, the date of priority of the design:

(i)

by a registered EU design, or an application for a registered EU design subject to its registration;

(ii)

by a registered design right of the Member State concerned, or by an application for such a right subject to its registration;

(iii)

by a design right registered under international arrangements which have effect in the Member State concerned, or by an application for such a right subject to its registration;

(f)

a distinctive sign is used in a subsequent design, and Union law or the law of the Member State concerned governing that sign confers on the right holder of the sign the right to prohibit such use;

(g)

the design constitutes an unauthorised use of a work protected under the copyright law of the Member State concerned.

2.   If the design has been registered, Member States may provide that the design right is to be declared invalid, where the design contains a total or partial reproduction of elements belonging to cultural heritage that are of national interest.

3.   The grounds for invalidity provided for in paragraph 1, points (a) and (b), may be invoked by the following:

(a)

any natural or legal person; or

(b)

any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, if that group or body has the capacity to sue and be sued in its own name under the law governing it.

4.   The ground for invalidity provided for in paragraph 1, point (c), may be invoked solely by the person or entity concerned by the improper use.

5.   The ground for invalidity provided for in paragraph 1, point (d), may be invoked solely by the person who is entitled to the design right under the law of the Member State concerned.

6.   The grounds for invalidity provided for in paragraph 1, points (e), (f) and (g), may be invoked solely by the following:

(a)

the applicant for or the holder of the earlier right;

(b)

the persons who are entitled under Union law or the law of the Member State concerned to exercise the right; or

(c)

a licensee authorised by the proprietor of the earlier right.

7.   A registered design right shall not be declared invalid where the applicant for or a holder of a right referred to in paragraph 1, points (e), (f) and (g), consented expressly to the registration of the design before submitting the application for a declaration of invalidity or the counterclaim.

8.   A design right may be declared invalid even after it has lapsed or has been surrendered.

Article 15 Object of protection

Protection shall be conferred for those features of appearance of a registered design which are shown visibly in the application for registration.

Article 16 Rights conferred by the design right

1.   The registration of a design shall confer on its holder the exclusive right to use it and to prevent any third party not having the consent of the holder from using it.

2.   The following, in particular, may be prohibited under paragraph 1:

(a)

making, offering, placing on the market or using a product in which the design is incorporated or to which it is applied;

(b)

importing or exporting a product referred to in point (a);

(c)

stocking a product referred to in point (a) for the purposes mentioned in points (a) and (b);

(d)

creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product referred to in point (a) to be made.

3.   The holder of a registered design right shall be entitled to prevent all third parties from bringing products, in the course of trade, from third countries into the Member State where the design is registered, that are not released for free circulation in that Member State, where the design is identically incorporated in or applied to those products, or the design cannot be distinguished in its essential aspects from such products, and the right holder’s authorisation has not been given.

The right referred to in the first subparagraph of this paragraph shall lapse, if, during the proceedings to determine whether the registered design right has been infringed, initiated in accordance with Regulation (EU) No 608/2013, evidence is provided by the declarant or the holder of the products that the holder of the registered design right is not entitled to prohibit the placing of the products on the market in the country of final destination.

Article 17 Presumption of validity

1.   In infringement proceedings it shall be presumed, in the favour of the holder of the registered design right, that the requirements for the legal validity of a registered design right provided for in Articles 3 to 8 are met, and that the design right has not been registered in breach of Article 13(1), point (c).

2.   The presumption of validity referred to in paragraph 1 shall be rebuttable by any procedural means available in the jurisdiction of the Member State concerned, including counterclaims.

Article 18 Limitation of the rights conferred by the design right

1.   The rights conferred by a design right upon registration shall not be exercised in respect of:

(a)

acts carried out privately and for non-commercial purposes;

(b)

acts carried out for experimental purposes;

(c)

acts of reproduction for the purposes of making citations or of teaching;

(d)

acts carried out for the purpose of identifying or referring to a product as that of the design right holder;

(e)

acts carried out for the purposes of comment, critique or parody;

(f)

the equipment on ships and aircraft registered in another country when these temporarily enter the territory of the Member State concerned;

(g)

the importation in the Member State concerned of spare parts and accessories for the purpose of repairing ships and aircraft referred to in point (f);

(h)

the execution of repairs on ships and aircraft referred to in point (f).

2.   Paragraph 1, points (c), (d) and (e), shall only apply where the acts are compatible with fair trade practices and do not unduly prejudice the normal exploitation of the design, and in the case referred to in point (c), where mention is made of the source of the product in which the design is incorporated or to which the design is applied.

Article 19 Repair clause

1.   Protection shall not be conferred on a registered design which constitutes a component part of a complex product upon whose appearance the design of the component part is dependent, and which is used within the meaning of Article 16(1) for the sole purpose of the repair of that complex product so as to restore its original appearance.

2.   Paragraph 1 shall not be invoked by the manufacturer or the seller of a component part of a complex product who failed to duly inform consumers, through a clear and visible indication on the product or in another appropriate form, about the commercial origin, and the identity of the manufacturer, of the product to be used for the purpose of the repair of the complex product, so that they can make an informed choice between competing products that can be used for the repair.

3.   The manufacturer or seller of a component part of a complex product shall not be required to guarantee that the component parts they make or sell are ultimately used by end users for the sole purpose of repair so as to restore the original appearance of the complex product.

4.   Where on 8 December 2024, the national law of a Member State provides protection for designs within the meaning of paragraph 1, the Member State shall, by way of derogation from paragraph 1, continue until 9 December 2032 to provide that protection for designs for which registration has been applied for before 8 December 2024.

Article 20 Exhaustion of rights

The rights conferred by a design right upon registration shall not extend to acts relating to a product in which a design included within the scope of protection of the design right is incorporated or to which it is applied, when the product has been placed on the market in the Union by the holder of the design right or with the holder’s consent.

Article 21 Rights of prior use in respect of a registered design right

1.   A right of prior use shall exist for any third party who can establish that, before the date of filing of the application, or, if priority is claimed, before the date of priority, the third party has in good faith commenced use within the Member State concerned, or has made serious and effective preparations to that end, of a design included within the scope of protection of a registered design right, which has not been copied from the latter.

2.   The right of prior use referred to in paragraph 1 shall entitle the third party to exploit the design for the purposes for which its use has been effected, or for which serious and effective preparations had been made, before the filing of the application or priority date of the registered design right.

Article 22 Relationship to other forms of protection

This Directive shall be without prejudice to any provisions of Union law relating to unregistered design rights, or to any provisions of Union law or the law of the Member State concerned relating to trade marks or other distinctive signs, patents and utility models, typefaces, civil liability or unfair competition.

Article 23 Relationship to copyright

A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection by copyright as from the date on which the design was created or fixed in any form provided that the requirements of copyright law are met.

Article 24 Registration symbol

The holder of a registered design right may inform the public that the design is registered by displaying on the product in which the design is incorporated or to which it is applied the letter D enclosed within a circle (

D

). Such design notice may be accompanied by the registration number of the design or hyperlinked to the entry of the design in the register.

Article 25 Application requirements

1.   An application for registration of a design shall contain at least all of the following:

(a)

a request for registration;

(b)

information identifying the applicant;

(c)

a sufficiently clear representation of the design which permits the subject matter for which protection is sought to be determined;

(d)

an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied.

2.   The application for design registration shall be subject to the payment of a fee determined by the Member State concerned.

3.   The indication of the products as referred to in paragraph 1, point (d), shall not affect the scope of protection of the design. That shall also apply to a description, and to any verbal disclaimers included therein, explaining the representation of the design if such a description is provided for by a Member State.

Article 26 Representation of the design

1.   The design shall be represented in any form of visual reproduction, either in black and white or in colour. The reproduction may be static, dynamic or animated and shall be effected by any appropriate means, using generally available technology, including drawings, photographs, videos, computer imaging or computer modelling.

2.   The reproduction shall show all the aspects of the design for which protection is sought in one or more views. In addition, other types of views may be provided with the purpose of further detailing specific features of the design.

3.   Where the representation contains different reproductions of the design or includes more than one view, those shall be consistent with each other, and the subject matter of the registration shall be determined by all the visual features of those views or reproductions combined.

4.   The design shall be represented alone, to the exclusion of any other matter.

5.   Matter for which no protection is sought shall be indicated by way of visual disclaimers. Any such visual disclaimers shall be used consistently.

6.   The Member States’ central industrial property offices and the Benelux Office for Intellectual Property shall cooperate with each other and with the European Union Intellectual Property Office to establish common standards to be applied to the requirements and means of design representation, in particular as regards the types and number of views to be used, the types of acceptable visual disclaimers, as well as the technical specifications for the means to be used for the reproduction, storage and filing of designs, such as the formats and size of the relevant electronic files.

Article 27 Multiple applications

Several designs may be combined in one multiple application for registered designs. That possibility shall not be subject to the condition that the products in which the designs are intended to be incorporated or to which they are intended to be applied all belong to the same class of the Locarno Classification.

Article 28 Date of filing

1.   The date of filing of a design application shall be the date on which the documents containing the information specified in Article 25(1), points (a), (b) and (c), are filed with the office by the applicant.

2.   Without prejudice to paragraph 1 of this Article, the date of filing may be accorded where one or more of the elements required by Article 26 are missing, provided that the representation of the design as a whole is sufficiently clear within the meaning of Article 25(1), point (c).

3.   Member States may, in addition, provide that the accordance of the date of filing is to be subject to the payment of a fee as referred to in Article 25(2).

Article 29 Scope of substantive examination

The offices shall limit their examination of whether the design applied for is eligible for registration to the absence of the substantive grounds for non-registrability referred to in Article 13.

Article 30 Deferment of publication

1.   The applicant for a registered design may request, when filing the application, that the publication of the registered design be deferred for a period of up to 30 months from the date of filing the application or, if priority is claimed, from the date of priority.

2.   Once the design has been registered, neither the representation of the design nor any file relating to the application shall be open to public inspection, subject to provisions of national law safeguarding legitimate interests of third parties.

3.   A mention of the deferment of the publication of the registered design shall be published.

4.   At the expiry of the period of deferment, or at any earlier date requested by the right holder, the office shall open to public inspection all the entries in its register and the file relating to the application and shall publish the registered design.

5.   The right holder may prevent the publication of the registered design as referred to in paragraph 4, by submitting a request for surrender of the registered design.

6.   Member States may provide, by way of derogation from paragraphs 4 and 5, that the office is to publish the registered design only at the request of the right holder. Where a Member State provides for the payment of a publication fee, the receipt of payment of that fee may be deemed to constitute such a request.

Article 31 Procedure for declaration of invalidity

1.   Without prejudice to the right of the parties to appeal to the courts, Member States may provide for an efficient and expeditious administrative procedure before their offices for the declaration of invalidity of a registered design right.

2.   The administrative procedure for invalidity referred to in paragraph 1 shall provide that the design right is to be declared invalid at least on the following grounds:

(a)

the design should not have been registered because it does not comply with the definition laid down in Article 2, point (3), or with the requirements provided for in Articles 3 to 8;

(b)

the design should not have been registered because it is in breach of Article 13(1)(c);

(c)

the design should not have been registered because of the existence of a prior design within the meaning of Article 14(1), point (e).

3.   The administrative procedure referred to in paragraph 1 shall provide that the following persons are to be entitled to file an application for a declaration of invalidity:

(a)

in the case of paragraph 2, point (a), of this Article, the persons, groups or bodies referred to in Article 14(3);

(b)

in the case of paragraph 2, point (b), of this Article, the person or entity referred to in Article 14(4);

(c)

in the case of paragraph 2, point (c), of this Article, at least the persons referred to in Article 14(6), points (a) and (b).

Article 32 Renewal

1.   Registration of a design shall be renewed at the request of the holder of the registered design right or any person authorised to request the renewal by law or by contract, provided that the renewal fees have been paid. Member States may provide that receipt of payment of the renewal fees is to be deemed to constitute such a request.

2.   The office shall inform the holder of the registered design right of the expiry of the registration at least six months before the date of such expiry. The office shall not be held liable if it fails to give such information and such failure shall not affect the expiry of the registration.

3.   The request for renewal shall be submitted and the renewal fees shall be paid within a period of at least six months immediately preceding the expiry of the registration.

Failing that, the request may be submitted within a further period of six months immediately following the expiry of the registration or of the subsequent renewal thereof. The renewal fees and an additional fee shall be paid within that further period.

4.   In the case of a multiple registration, where the renewal fees paid are insufficient to cover all the designs for which renewal is requested, registration shall be renewed in respect of those designs which the amount paid is clearly intended to cover.

5.   Renewal shall take effect from the day following the date on which the existing registration expires. The renewal shall be recorded in the register.

Article 33 Communication with the office

Parties to the proceedings or, where appropriate, their representatives, shall designate an official address for all official communication with the office. Member States shall have the right to require that such an official address be situated in the European Economic Area.

Article 34 Cooperation in the area of design registration, administration and invalidity

The offices shall be free to cooperate effectively with each other and with the European Union Intellectual Property Office in order to promote convergence of practices and tools in relation to the examination, registration and invalidation of designs.

Article 35 Cooperation in other areas

The offices shall be free to cooperate effectively with each other and with the European Union Intellectual Property Office in all areas of their activities other than those referred to in Article 34 which are of relevance for the protection of designs in the Union.

Article 36 Transposition

1.   Member States shall bring into force the laws, regulations or administrative provisions necessary to comply with Articles 2 and 3, Article 6, Articles 10 to 19, Article 21, Articles 23 to 30 and Articles 32 and 33 by 9 December 2027. They shall immediately communicate the text of those measures to the Commission.

When Member States adopt those measures, they shall contain a reference to this Directive or be accompanied by such a reference on the occasion of their official publication. They shall also include a statement that references in existing laws, regulations and administrative provisions to the Directive repealed by this Directive shall be construed as references to this Directive. Member States shall determine how such reference is to be made and how that statement is to be formulated.

2.   Member States shall communicate to the Commission the text of the main provisions of national law which they adopt in the field covered by this Directive.

Article 37 Repeal

Directive 98/71/EC is repealed with effect from 9 December 2027, without prejudice to the obligations of the Member States relating to the time-limit for the transposition into national law of the Directive set out in Annex I.

References to the repealed Directive shall be construed as references to this Directive and shall be read in accordance with the correlation table set out in Annex II.

Article 38 Entry into force

This Directive shall enter into force on the twentieth day following that of its publication in the Official Journal of the European Union .

However, Articles 4, 5, 7, 8, 9, 20 and 22 shall apply from 9 December 2027.

Article 39 Addressees

This Directive is addressed to the Member States.

Schedules & Appendices

ANNEX I Time limit for transposition into national law (referred to in Article 37)

ANNEX I

Time limit for transposition into national law (referred to in Article 37)

Directive

Time limit for transposition

98/71/EC

28 October 2001

ANNEX II Correlation table

ANNEX II

Correlation table

Directive 98/71/EC

This Directive

Article 1, introductory wording

Article 2, introductory wording

—

Article 2, points (1) and (2)

Article 1, point (a)

Article 2, point (3)

Article 1, point (b)

Article 2, point (4)

Article 1, point (c)

Article 2, point (5)

Article 2

Article 1

Articles 3 to 10

Articles 3 to 10

—

Articles 11 and 12

Article 11

Articles 13 and 14

—

Article 15

Article 12(1)

Article 16(1) and (2), points (a), (b) and (c)

—

Article 16(2), point (d)

—

Article 16(3)

Article 12(2)

—

—

Article 17

Article 13(1), points (a), (b) and (c)

Article 18(1), points (a), (b) and (c)

—

Article 18(1), points (d) and (e)

Article 13(2), points (a), (b) and (c)

Article 18(1), points (f), (g) and (h)

—

Article 18(2)

Article 14

—

—

Article 19

Article 15

Article 20

—

Article 21

Article 16

Article 22

Article 17

Article 23

—

Articles 24 to 35

Article 18

—

Article 19

Article 36

—

Article 37

Article 20

Article 38

Article 21

Article 39

—

Annex I

—

Annex II