Advertisement of a lawyer. Developments and innovations in industrial EU design protection

"The European Commission has published its proposals for a regulation amending the Community Design Regulation No. 2/2006 and amendments to the Community Design Directive. The planned changes essentially aim to modernize EU design protection systems so that they are suitable for the digital age, to ensure to make them more accessible and effective for applicants and persons seeking to remove invalid designs from the register.

 

"Amendments to the Design Regulation and Directive will also aim to implement the goals of the "European Green Course Plan" and create a common market for spare parts intended for repair by establishing a clause on repair," says Jaunius Navickas, a lawyer at the "NEWTON LAW" professional association of lawyers, assistant attorney.

 

The lawyer points out that creative business entities (especially businesses operating in the technology sector) who seek to properly and effectively protect their intellectual property, as well as those who seek to reduce the risk of gratuitously losing investments in product designs, need to familiarize themselves with the expected changes in advance and understand emerging new opportunities and challenges.

 

For the stated reasons, in this article, lawyer J. Navickas reminds us what is considered a design and how to protect it, and provides a brief overview of the proposed changes to the protection of designs and some related advice.

 

What is a design and by what legal means is it protected?

 

According to the current regulation, a design is defined as an image of the whole or a part of the product, consisting of the specific characteristics of the product and/or its ornamentation – lines, contours, colors, shape, texture and/or material, and is considered a product only in an industrial way or hand-made items, including components, packaging, decoration, graphic symbols and typefaces used to construct a composite product, excluding computer programs.

 

Usually, the design of the product is protected as an object of industrial property after it is registered in the Design Register of the Republic of Lithuania or in the Register of the Intellectual Property Office of the European Union (or by registration in the International Register).

 

"For a design to be registrable, it must be considered novel and possess individual characteristics. A registered design is protected as a Community design for five years from the date of application. The validity of legal protection can be extended once or several times in five-year periods, but no more than 25 years from the date of filing the application," the lawyer points out.

 

However, a product design, if it meets the necessary conditions, can also be protected as an "Unregistered Community Design". In this case, the design is granted three-year protection from the date of the first presentation of the design to the public on the territory of the European Union, but the protection cannot be extended after the stipulated term.

 

It is worth noting that designs that meet originality and other criteria can also be protected under copyright. The latter protection also does not require registration and is valid from the moment of creation.

 

Innovations and changes are expected

 

Assistant lawyer J. Navickas points out that, first of all, the concepts of "design" and "product" will be supplemented and updated to include not only those embodied in a physical body, but also manifested in digital form. This will allow such technological phenomena as 3D printing designs, NFT's and Metaverse to be "tucked" under design protection.

 

Second, there will be a “repair clause”. This is probably the first time in the history of intellectual property law of the European Union, when the right to repair will be recognized as an independent and permanent clause of the exclusive rights of intellectual property owners, giving the right to the consumer (or user of the product) to use the designer's intellectual property for the repair of a composite product purposes, i.e. i.e. in order to restore the original appearance of the product.

 

Third, the registration symbol is entered. The holder of the right to a registered design will be able to inform the public that the design is registered by marking the product to which the design is used or adapted with a circled letter "D".

 

Fourth, the concept of the object of protection is clarified. The lawyer notes that it will be envisaged that design protection can be granted (only) to those features of appearance that are clearly visible in the registration application.

 

Fifth, since no Member State provides protection for unregistered designs, the phenomenon of "Unregistered Community Design" will be abandoned and legal protection of designs will only apply to registered designs.

 

Finally, applicants applying for design registration will have the opportunity to represent the design not only by photographs or graphic images, but also by any other appropriate means using generally available technologies, including drawings, photographs, video or computer visualization or simulation. Applicants will also be able to submit composite applications at the national level anywhere, combining multiple designs in a single application and not limited to products of the same nature.

 

The paralegal emphasizes that these changes will be beneficial in reducing registration costs.

 

How to prepare for these changes?

 

Designers should take steps now to protect their intellectual property. First of all, the lawyer recommends that you familiarize yourself with the expected changes or contact intellectual property law specialists, so that they can professionally assess the impact of these changes on your business.

 

Lawyers can also help determine whether the tools used in your business are not protected intellectual property, thus preventing legal liability.

 

Secondly, in the opinion of the lawyer, it is recommended to review your products, determine whether they can be (are) protected by designs and decide whether to put these products on the market without registration or wait for changes. However, it should be noted that even according to the current regulation, digital objects such as logos, computer icons, typefaces, graphic or web designs are considered to be examples of design, so it is not necessary to wait for regulatory amendments to protect their designs.

 

According to Mr. Navick, businesses should accordingly update and change internal procedures (recommendations for employees) related to the changing procedure for submitting and administering design applications and familiarize employees with this information."