EU design law gets a digital upgrade

Below, we summarise the key changes for applicants and design owners.

Alternative design submission formats - CAD and animations

“Dynamic representations” of designs may now be submitted. Dynamic representations include 3D file formats used in CAD software, specifically OBJ and STL file formats. Importantly, such CAD files can now be submitted in place of conventional static views. This could make design protection for 3D products significantly easier to obtain, particularly for smaller applicants.

Dynamic representations also include animations, which may be submitted as an MP4 file. 

This works in combination with changes made during the first phase of the reform, which specified explicitly that a registered design may be used to protect animated, moving, and transitioning features. Additionally, design protection has been expanded to more explicitly protect non-physical items, including GUIs, surface patterns, sets and spatial arrangements of interiors or exteriors.

Improved protection against counterfeiting

From the first stage of the reform, new infringing uses of registered designs were introduced, specifically to target unauthorised 3D printing using registered designs. Creating, downloading, copying, and sharing or distributing any medium or software recording the design for the purpose of manufacturing a product are now explicitly covered, providing additional options for enforcement.

Additionally, action can now be taken against counterfeit products using a registered design when passing through the EU, even if they are not released in the EU. This aligns with corresponding laws for trade marks.

Also similar to trade marks, a symbol has been introduced to signify registered design protection. A letter D enclosed within a circle may now be used to inform the public that a design is a registered European Union design.

Abolition of class requirement

Also from the reform’s first stage, the single-class requirement for an application for a registered design has been abolished. 

Previously, each design in an application had to be in the same Locarno class. This complicated design protection for products comprising multiple aspects (e.g. a smartwatch comprising a main body, strap, and charger, all of which could fall in different classes).  

With this change, a wider range of designs may now be included in a single application. The total number of designs per application is now limited to 50 designs, with a flat fee per design.

Conclusion

Taken together, these reforms should make EU design protection more flexible, more widely applicable, and easier to use. In several respects, the EU has now moved ahead of the UK (whose design law has branched off from the EU’s due to Brexit) - hopefully the UK will take note and follow suit.

While the new rules may simplify the process of obtaining registered design protection, care is still needed to ensure that the right designs are filed in the right way.  A well-planned filing strategy can be critical to securing commercially useful protection.

Potter Clarkson’s designs team has extensive experience advising on registered designs in the UK, EU and internationally, and can help applicants build robust protection around their products. If you have any questions, please do get in touch.