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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
Source: EUR-Lex (Publications Office of the EU), © European Union, reuse permitted under Commission Decision 2011/833/EU.
