Regulation (EU) 2024/2822 of the European Parliament and of the Council of 23 October 2024 amending Council Regulation (EC) No 6/2002 on Community designs and repealing Commission Regulation (EC) No 2246/2002 (Text with EEA relevance)
Regulation (EU) 2024/2822 of the European Parliament and of the Councilof 23 October 2024amending Council Regulation (EC) No 6/2002 on Community designs and repealing Commission Regulation (EC) No 2246/2002(Text with EEA relevance)THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,Having regard to the Treaty on the Functioning of the European Union, and in particular Article 118, first paragraph, thereof,Having regard to the proposal from the European Commission,After transmission of the draft legislative act to the national parliaments,Having regard to the opinion of the European Economic and Social CommitteeOJ C 184, 25.5.2023, p. 39.,After consulting the Committee of the Regions,Acting in accordance with the ordinary legislative procedurePosition of the European Parliament of 14 March 2024 (not yet published in the Official Journal) and decision of the Council of 10 October 2024.,Whereas:(1)Council Regulation (EC) No 6/2002Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ L 3, 5.1.2002, p. 1). created a system of design protection specific to the European Community which has since then provided for the protection of designs at Union level in parallel to the protection of designs available at national level in Member States in accordance with their national law on design protection, harmonised pursuant to Directive 98/71/EC of the European Parliament and of the CouncilDirective 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (OJ L 289, 28.10.1998, p. 28)..(2)In line with its Communication of 19 May 2015 entitled "Better Regulation for better results – An EU agenda" and its commitment to review Union policies regularly, the Commission carried out an extensive evaluation of the design protection systems in the Union, involving a comprehensive economic and legal assessment, supported by a series of studies.(3)In its conclusions of 10 November 2020 on intellectual property policy and the revision of the industrial design system in the Union, the Council called on the Commission to present proposals for the revision of Regulation (EC) No 6/2002 and Directive 98/71/EC. The revision was requested to modernise the protection systems relating to industrial designs in the Union and to make design protection more attractive for individual designers and businesses, especially small and medium-sized enterprises (SMEs).(4)Since the establishment of the Community design system, experience has shown that individual designers and undertakings from within the Union and from third countries have accepted the system and it has become a successful and viable complement or alternative to the protection of designs at the national level of the Member States.(5)In its resolution of 11 November 2021 on an intellectual property action plan to support the EU’s recovery and resilienceOJ C 205, 20.5.2022, p. 26., the European Parliament pointed out that the current EU design protection system was set up 20 years ago and should be revised, highlighting the need to update it in order to ensure greater legal certainty, thus echoing the call of the Council to present proposals for the revision of Regulation (EC) No 6/2002 and Directive 98/71/EC.(6)National design protection systems continue nevertheless to be necessary for those individual designers and undertakings that do not want protection of their designs at Union level, or are unable to obtain Union-wide protection, even though they do not face any obstacles for obtaining national protection. It should be left to each person seeking design protection to decide what kind of protection they wish to obtain, be it a national design right in one or more Member States, an EU design only, or both.(7)While its evaluation of the Union’s legislation on design protection confirmed that it is still largely fit for purpose, the Commission announced in its communication of 25 November 2020 entitled "Making the most of the EU’s innovative potential – An intellectual property action plan to support the EU’s recovery and resilience" that, following the successful reform of the EU trade mark legislation, it would revise the Union legislation on design protection with a view to simplifying the system and making it more accessible and efficient, and with a view to updating the regulatory framework in light of developments in relation to new technologies on the market.(8)In parallel with the improvements and amendments to the EU design system, national design laws and practices should be further harmonised and brought into line with the EU design system to the extent appropriate, in order to create, as far as possible, equal conditions for the registration and protection of designs throughout the Union. This should be complemented by further efforts of the European Union Intellectual Property Office (EUIPO) (the "Office"), the central industrial property offices of the Member States and the Benelux Office for Intellectual Property to promote convergence of practices and tools in the field of designs under the cooperation framework laid down in Regulation (EU) 2017/1001 of the European Parliament and of the CouncilRegulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ L 154, 16.6.2017, p. 1)..(9)It is necessary to adapt the terms used in Regulation (EC) No 6/2002 to the amendments introduced in the founding Treaties by the Treaty of Lisbon. This entails the replacement of "Community design" by "European Union design" ("EU design"). In addition, the terms used in Regulation (EC) No 6/2002 need to be aligned with those of Regulation (EU) 2017/1001. This involves in particular the replacement of the name "Office for Harmonisation in the Internal Market (trade marks and designs)" by "European Union Intellectual Property Office".(10)As a complement to the administration of the EU design system, it is essential that the Office adequately promote that system with a view to raising awareness and improving understanding of the possibility, value and benefits of obtaining and using design protection at Union level.(11)Since the establishment of the Community design system, the rise of information technology has entailed the advent of new designs which are not embodied in physical products. That calls for a broadening of the definition of products eligible for design protection to clearly cover those embodied in a physical object, or visualised in a graphic, or that are apparent from the spatial arrangement of items intended to form an interior or exterior environment. In this context, it should be recognised that animation, such as movement or transition, of the features of a product can contribute to the appearance of designs, in particular designs that are not embodied in a physical object.(12)In order to ensure legal certainty, it is appropriate to clarify that protection is conferred upon the right holder, by way of registration of an EU design, for those design features of a product, in whole or in part, which are shown visibly in an application for registration of such design and made available to the public by way of publication.(13)Apart from being shown visibly in an application for registration of an EU design, design features of a product do not need to be visible at any particular time or in any particular situation of use in order to benefit from design protection. An exception to that principle applies to the design protection of component parts of a complex product that need to remain visible during normal use of that product.(14)In view of the growing deployment of 3D printing technologies in different areas of industry, including with the help of artificial intelligence, as well as the resulting challenges for design right holders to effectively prevent illegitimate copying of their protected designs, it is appropriate to provide that the creation, downloading, copying and making available of any medium or software which records the design for the purpose of reproduction of a product that infringes the protected design, constitutes use of the design which should be subject to the right holder’s authorisation.(15)In order to ensure design protection and combat counterfeiting effectively, and in line with international obligations of the Union under the framework of the World Trade Organization (WTO), in particular Article V to the General Agreement on Tariffs and Trade (GATT 1947) on freedom of transit, and, as regards generic medicines, the Doha Declaration on the TRIPS Agreement and Public Health, adopted by the WTO Ministerial Conference on 14 November 2001, the holder of a registered EU design should be entitled to prevent third parties from bringing products, in the course of trade, from third countries into the Union, without being released for free circulation there, where, without right holder’s authorisation, such products incorporate a design which is identical or essentially identical to the registered EU design or where a design is applied to those products which is identical or essentially identical to the registered EU design.(16)To that end, it should be permissible for holders of registered EU designs to prevent the entry of infringing products and the placement of such products in all customs situations, also when such products are not intended to be placed on the market of the Union. In performing customs controls, the customs authorities should make use of the powers and procedures laid down in Regulation (EU) No 608/2013 of the European Parliament and of the CouncilRegulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003 (OJ L 181, 29.6.2013, p. 15)., including at the request of the right holders. In particular, the customs authorities should carry out the relevant controls on the basis of risk analysis criteria.(17)In order to reconcile the need to ensure the effective enforcement of design rights with the necessity to avoid hampering the free flow of trade in legitimate products, the entitlement of the holder of the registered EU design should lapse where, during proceedings initiated before the European Union design court ("EU design court") that is competent to take a substantive decision on whether the EU design has been infringed, the declarant or the holder of the products is able to prove that the holder of the registered EU design is not entitled to prohibit the placing of the products on the market in the country of final destination.(18)The exclusive rights conferred by a registered EU design should be subject to an appropriate set of limitations. Apart from acts carried out privately and for non-commercial purposes and those carried out for experimental purposes, permissible use should include acts of reproduction for the purpose of making citations or acts of teaching, referential use in the context of comparative advertising, and use for the purpose of comment, critique or parody, provided that those acts are compatible with fair trade practices and do not unduly prejudice the normal exploitation of the design. Use of a registered EU design by third parties for the purpose of artistic expression should be considered to be fair as long as it is in accordance with honest practices in industrial and commercial matters. Furthermore, the rules on EU designs should be applied in a way that ensures full respect of fundamental rights and freedoms, in particular the freedom of expression.(19)Directive (EU) 2024/2823 of the European Parliament and of the CouncilDirective (EU) 2024/2823 of the European Parliament and of the Council of 23 October 2024 on the legal protection of designs (OJ L, 2024/2823, 18.11.2024, ELI: http://data.europa.eu/eli/dir/2024/2823/oj). harmonises the laws of Member States as regards the use of protected designs for the purpose of permitting the repair of a complex product so as to restore its original appearance, where the design is applied to or incorporated in a product which constitutes a component part of a complex product upon whose appearance the protected design of the component part is dependent. Accordingly, the current transitional repair clause contained in Regulation (EC) No 6/2002 should become a permanent provision. As the intended effect of that repair clause is to make registered and unregistered EU design rights unenforceable where the design of the component part of a complex product is used for the purpose of the repair of a complex product so as to restore its original appearance, the repair clause should be one of the defences to EU design right infringement under Regulation (EC) No 6/2002. Furthermore, for the sake of coherence with the repair clause in Directive (EU) 2024/2823, and in order to ensure that the scope of design protection is only restricted to prevent design right holders from actually being granted product monopolies, it is necessary to explicitly limit the application of the repair clause set out in Regulation (EC) No 6/2002 to component parts of a complex product upon whose appearance the protected design is dependent. In addition, in order to ensure that consumers are not mislead and are able to make an informed decision between competing products that can be used for the repair, it should be explicitly provided for that the repair clause cannot be invoked by a manufacturer or seller of a component part who has failed to duly inform consumers about the commercial origin, and the identity of the manufacturer, of the product to be used for the purpose of repair of the complex product. That detailed information should be provided through a clear and visible indication on the product or, where that is not possible, on its packaging or in a document accompanying the product, and should include at least the trade mark under which the product is marketed, and the name of the manufacturer.(20)With a view to preserving the effectiveness of the liberalisation of the spare parts aftermarket sought by this Regulation and in line with the case lawJudgment of the Court of Justice of 20 December 2017, Acacia Srl v Pneusgarda Srl and Audi AG and Acacia Srl and Rolando D’Amato v Dr Ing. h.c.F. Porsche AG, joined Cases C-397/16 and C-435/16, ECLI:EU:C:2017:992. of the Court of Justice of the European Union, in order to be able to benefit from the repair clause exemption from design protection, the manufacturer or seller of a component part of a complex product is under a duty of diligence to ensure, through appropriate means, in particular contractual means, that downstream users do not intend to use the component parts at issue for purposes other than that of repair so as to restore the original appearance of the complex product. This however should not require the manufacturer or seller of a component part of a complex product to guarantee, objectively and in all circumstances, that the parts they make or sell are, ultimately, actually used by end users for the sole purpose of repair so as to restore the original appearance of that complex product.(21)In order to facilitate the marketing of design-protected products, in particular by SMEs and individual designers, and to increase awareness of the design registration regimes existing both at Union and national level, a commonly accepted notice consisting of the symbol should be available for use by design right holders and others with their consent.(22)In view of the insignificant number of applications for registered EU designs filed at the central industrial property offices of the Member States and the Benelux Office for Intellectual Property, and in order to align the system for applying for registered EU designs to the system set out in Regulation (EU) 2017/1001, it should only be possible to file an application for a registered EU design at the Office. In order to facilitate the provision of information and administrative guidance to applicants on the procedure for the registration of EU designs, it is appropriate that the Office and the central industrial property offices of the Member States and the Benelux Office for Intellectual Property cooperate with each other to that end under the cooperation framework laid down in Regulation (EU) 2017/1001.(23)Both technological advancement and the experience gained in the application of the current EU design registration system have revealed the need for improvement of certain aspects of procedure. Consequently, certain measures should be taken to update, simplify and speed up procedures, where appropriate, and to enhance legal certainty and predictability where necessary.(24)To this end, it is of key importance to provide the appropriate means to allow a clear and precise representation for all designs, which is adaptable to technical advances in relation to the visualisation of designs and the needs of the Union industry. In order to ensure that the same graphic representation can be used for design applications in one or more Member States and for applications for registered EU designs, the Office, the central industrial property offices of the Member States and the Benelux Office for Intellectual Property should be required to cooperate with each other to establish common standards for the formal requirements that the representation has to fulfil.(25)For greater efficiency it is also appropriate to facilitate the filing of multiple applications for registered EU designs by allowing applicants to combine designs in one application without being 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 International Classification for Industrial Designs ("Locarno Classification") established by the Locarno Agreement (1968). However, a maximum limit should be provided for to avoid potential abuse of multiple filings.(26)For reasons of efficiency and to streamline proceedings, the means of notification and communication should be electronic only. Nevertheless, it is important that the Office provide appropriate technical guidance and assistance, both online and offline, in order to facilitate the use of electronic means and prevent digital divide.(27)Given the essential importance of the amounts of fees payable to the Office for the functioning of the EU design protection system and its complementary relationship as regards national design systems, and in order to align the legislative approach provided for in Regulation (EC) No 6/2002 with Regulation (EU) 2017/1001, it is appropriate to set those fee amounts directly in Regulation (EC) No 6/2002 in an annex. The amounts of the fees should be fixed at a level which ensures both that the revenue they produce is in principle sufficient for the budget of the Office to be balanced and that EU design and the national design systems coexist and complement each other, taking into account, inter alia, the size of the market covered by the EU design and the needs of SMEs.(28)Regulation (EC) No 6/2002 confers powers on the Commission to adopt rules implementing that Regulation. As a consequence of the entry into force of the Treaty of Lisbon, the powers conferred upon the Commission under Regulation (EC) No 6/2002 need to be aligned with Articles 290 and 291 of the Treaty on the Functioning of the European Union (TFEU).(29)In order to ensure an effective, efficient and expeditious examination and registration of EU design applications by the Office using procedures which are transparent, thorough, fair and equitable, the power to adopt delegated acts in accordance with Article 290 TFEU should be delegated to the Commission to supplement Regulation (EC) No 6/2002 by specifying the details on the procedure for amending an application.(30)In order to ensure that a registered EU design can be declared invalid in an effective and efficient way by means of a transparent, thorough, fair and equitable procedure, the power to adopt delegated acts in accordance with Article 290 TFEU should be delegated to the Commission to supplement Regulation (EC) No 6/2002 by specifying the proceedings for declaring a registered EU design invalid.(31)In order to allow for an effective, efficient and complete review of decisions of the Office by the Boards of Appeal by means of a transparent, thorough, fair and equitable procedure, the power to adopt delegated acts in accordance with Article 290 TFEU should be delegated to the Commission to supplement Regulation (EC) No 6/2002 by specifying the details of appeal proceedings where proceedings relating to EU designs require derogations from the provisions set out in delegated acts adopted pursuant to Article 73 of Regulation (EU) 2017/1001.(32)In order to ensure a smooth, effective and efficient operation of the EU design system, the power to adopt delegated acts in accordance with Article 290 TFEU should be delegated to the Commission to supplement Regulation (EC) No 6/2002 by specifying the requirements as to the details on oral proceedings and the detailed arrangements for taking of evidence, the detailed arrangements for notification, the means of communication and the forms to be used by the parties to proceedings, the rules governing the calculation and duration of time limits, the procedures for the revocation of a decision or for cancellation of an entry in the Register of EU designs, the detailed arrangements for the resumption of proceedings, and the details on representation before the Office.(33)In order to ensure an effective and efficient organisation of the Boards of Appeal, the power to adopt delegated acts in accordance with Article 290 TFEU should be delegated to the Commission to supplement Regulation (EC) No 6/2002 by specifying the details on the organisation of the Boards of Appeal where proceedings relating to EU designs require derogation from the delegated acts adopted pursuant to Article 168 of Regulation (EU) 2017/1001.(34)It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level, and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-MakingOJ L 123, 12.5.2016, p. 1.. In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States’ experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts.(35)In order to ensure uniform conditions for the implementation of Regulation (EC) No 6/2002, implementing powers should be conferred on the Commission to specify the details concerning applications, requests, certificates, claims, regulations, notifications and any other document under the relevant procedural requirements established by Regulation (EC) No 6/2002, as well as to establish the maximum rates for costs essential to the proceedings and actually incurred, the details concerning publications in the European Union Designs Bulletin and the Official Journal of the Office, the detailed arrangements for exchange of information between the Office and national authorities, the detailed arrangements concerning translations of supporting documents in written proceedings, and exact types of decisions to be taken by a single member of the Invalidity Divisions. Those powers should be exercised in accordance with Regulation (EU) No 182/2011 of the European Parliament and of the CouncilRegulation (EU) No 182/2011 of the European Parliament and of the Council of 16 February 2011 laying down the rules and general principles concerning mechanisms for control by Member States of the Commission’s exercise of implementing powers (OJ L 55, 28.2.2011, p. 13)..(36)Given the advanced harmonisation of copyright law in the Union, it is appropriate to adjust the principle of cumulation of protection under Regulation (EC) No 6/2002 and under copyright law by allowing designs protected by EU design rights to be protected as copyright works, provided that the requirements of copyright law are met.(37)Regulation (EC) No 6/2002 should therefore be amended accordingly and Commission Regulation (EC) No 2246/2002Commission Regulation (EC) No 2246/2002 of 16 December 2002 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) in respect of the registration of Community designs (OJ L 341, 17.12.2002, p. 54). should be repealed.(38)Commission Regulation (EC) No 2245/2002Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs (OJ L 341, 17.12.2002, p. 28). should be amended by the Commission in order to align it with the amendments introduced by this Regulation to Regulation (EC) No 6/2002 regarding the terms to be used following the entry into force of the Treaty of Lisbon and the terms used in Regulation (EU) 2017/1001, the reference to rules concerning fees payable to the Office, the duration of time limits and the representation before the Office, as well as the inclusion of a number of rules initially contained in Regulation (EC) No 2245/2002 in Regulation (EC) No 6/2002. The repeal of the empowerment that served as the basis for the adoption and revision of Regulation (EC) No 2245/2002 should be without prejudice to the maintaining in force of that Regulation until it is repealed.(39)Since the objectives of this Regulation cannot be sufficiently achieved by the Member States but can rather, by reason of the autonomous nature of the EU design system being independent from national systems, be better achieved at Union level, the Union may adopt measures, in accordance with the principle of subsidiarity as set out in Article 5 of the Treaty on European Union. In accordance with the principle of proportionality as set out in that Article, this Regulation does not go beyond what is necessary in order to achieve those objectives.(40)The European Data Protection Supervisor was consulted in accordance with Article 42(1) of Regulation (EU) 2018/1725 of the European Parliament and of the CouncilRegulation (EU) 2018/1725 of the European Parliament and of the Council of 23 October 2018 on the protection of natural persons with regard to the processing of personal data by the Union institutions, bodies, offices and agencies and on the free movement of such data, and repealing Regulation (EC) No 45/2001 and Decision No 1247/2002/EC (OJ L 295, 21.11.2018, p. 39).,HAVE ADOPTED THIS REGULATION:
should be available for use by design right holders and others with their consent.