November 2024 Since the UK left the European Union in 2020, neither the UK nor the EU has made any significant changes to its IP legislation, and thus IP laws on both sides of the English Channel have remained primarily in alignment ever since. However, a new EU Regulation and a new EU Directive governing design rights across the EU Member States have recently been introduced, which will not directly affect the corresponding provisions of UK design law. This change therefore marks the first significant divergence in IP legislation post-Brexit.
Background
The UK’s decision to leave the EU has had a significant impact on both the UK and the EU, ranging from disputes over our future trading relationship to subsidies for farmers. However, the effect of Brexit on IP legislation is talked about much less often.
Whilst UK patent law is based on the European Patent Convention, a treaty distinct from those establishing the European Union, and is thus unchanged as a result of Brexit, existing UK law governing trade marks and design rights is derived from EU legislation. Earlier this month, the EU legislature approved a new EU Design Regulation (no. 2024/2822), making some significant changes to EU-wide design rights, and a new EU Design Directive (no. 2024/2823), instructing all EU Member States to make specific changes to their national design laws. As the UK is no longer an EU Member State, the new Regulation and Directive will not apply to the UK, and thus these changes represent the first significant divergence between UK and EU intellectual property law since Brexit.
Some of the most important changes are detailed below.
Nomenclature
A rather inconsequential, and perhaps belated, change coming with the new law is that “Community Designs”, named as such because they were introduced during the days of the European Community, are being renamed “European Union Designs”.
Definitions
More importantly, the new legislation updates the definitions of “design” and “product” in EU design law, primarily to ensure that animations can now be protected by design rights.
Thus, across the EU, a “design” will in future be defined as “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”, whilst a “product” will be defined as “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”.
The underlined portions are not found in UK design law, and thus whilst animations will in future be protectable by EU design rights, the same cannot currently be said for UK design rights.
Visibility in Use
The EU courts have previously held that only designs which are visible during normal use of the product concerned can be protected by design rights. However, the new legislation removes this general requirement, instead providing that this will only apply to designs for component parts of complex products.
Cultural Heritage
The new Directive introduces a new ground for refusal of registration of a design, which the EU Member States will be permitted to apply to their national design registrations, if they so choose. Specifically, EU Member States are now permitted to refuse to grant national design registrations for designs containing a total or partial reproduction of elements belonging to cultural heritage that are of national interest.
Spare Parts
Existing legislation has led to differences between EU Member States regarding the extent to which national design rights protect against third parties manufacturing spare parts for other products to a particular design needed to ensure the overall appearance of the product is not changed by repairing the product with that spare part. These are colloquially known as “must-match spare parts”.
In some EU countries, national design rights can be used to stop third parties manufacturing must-match spare parts. However, in others, must-match spare parts are not considered to infringe national design rights (this is also the case in the UK and for EU-wide design rights administered by the EUIPO).
Under the new Directive, all EU Member States will be required to adopt the second alternative. In other words, must-match spare parts will be excepted from infringement in all EU Member States, harmonising the position taken and bringing national law into line with EU-wide design rights.
3D Printing
A new act of infringement has been introduced to protect against unauthorised 3D printing of products made to a design protected by a registered design right.
Specifically, it will soon be an infringement of registered designs in the EU to create, download, copy and share or distribute to others any medium or software which records the design for the purpose of enabling an infringing product to be made.
Territoriality
A more controversial change is that it will soon be possible for EU design rights to be enforced against those transporting infringing products through the EU, even if those products are not destined for the EU market.
Accordingly, those shipping products from one country to another via the EU would be wise to bear this in mind, and those looking to enforce their rights should take note of this new opportunity.
“First Disclosure” Requirement
To the joy of those of us practising in the IP profession, the new legislation has removed one of the great uncertainties surrounding unregistered EU design rights.
The EU previously introduced a requirement that “a design which has not been made public within the territory of the Community shall not enjoy protection as an unregistered Community design”.
It has long been unclear whether this means that (i) the first disclosure, i.e. the making public, of the design anywhere in the world must occur within an EU Member State for that design to qualify for unregistered EU design protection, or (ii) the design must be disclosed, i.e. made available to the public, in the EU before an unregistered EU design right arises therefor, regardless of whether that design has already been disclosed elsewhere.
The UK High Court had asked the Court of Justice of the European Union (“CJEU”) to settle this issue, however that question was automatically withdrawn when the UK left the EU before the CJEU could hear the case.
Fortunately, the new Regulation completely removes this requirement, meaning the location at which the design is first disclosed will no longer affect whether an unregistered EU design right exists.
Conclusions
The changes to EU design law are significant and come into effect soon. Specifically, the new EU Regulation will apply from 1 May 2025, whilst EU Member States will have until 9 December 2027 to bring their national laws into conformity with the new Directive.
Of particular interest to those of us in the UK is whether the UK government will now follow suit. If so, design law will remain harmonised between the UK and the EU for the foreseeable future. However, if the UK government chooses a different path or takes no action, then the English Channel will soon become that little bit wider in the world of IP.
