Table of contents 1.Introduction 2.Background to the Intervention 2.1.Description of the intervention and its objectives 2.2.Baseline and points of comparison 3.Implementation/state of play 3.1.Description of the current situation 3.2.Use of the design protection system 3.3.technological development and awareness of design protection 4.Method 4.1.Short description of methodology 4.2.Limitations and robustness of findings 5.Analysis 5.1.Overall Functioning of the EU system for design protection 5.1.1.General feedback on the functioning of the EU system for design protection 5.1.2.General feedback on the achievement of the EU intervention’s objectives 5.2.Protection tools 5.2.1.Different ways of protecting designs

5.2.2.Protection requirements and scope of protection 5.2.3.Rights conferred 5.2.4.Defences to infringement 5.2.5.Term of protection 5.2.6.Relation to other forms of IP protection 5.2.7.Conclusions 5.3.Procedures 5.3.1.Means and requirements of design representation 5.3.2.Different filing options 5.3.3.Substantive examination 5.3.4.Administrative invalidity proceedings 5.3.5.Experience with the Community and national registration systems 5.3.6.Fees 5.3.7.Conclusions 5.4.Enforcement 5.4.1.Design rights as protection tools against the unlawful behaviour of third parties 5.4.2.Functioning of the design enforcement system 5.4.3.Functioning of the Community design courts 5.4.4.Conclusions 5.5.Spare parts

5.5.1.Specific rules on spare parts used for repair purposes 5.5.2.Segmented internal market for spare parts 5.5.3.Conclusions 5.6.International Dimension 5.6.1.Link to the international Hague agreement 5.6.2.Conformity with the Design Law Treaty 5.7.Coherence with the Trade Mark Reform 5.8.Compliance with the Lisbon Treaty 5.9.Overall Conclusions Annex 1: Procedural information Annex 2: Stakeholder consultation – Synopsis Report Annex 3: Methods and analytical models Annex 4: Results of the Open Public Consultation – Factual summary report Annex 5: Overview of costs – benefits identified in the evaluation Annex 6: Convergence of Practices Glossary Term or acronym Meaning or definition 3D Printing Study “ The Intellectual property implications of the development of industrial 3D printing ”, April 2020 CJEU Court of Justice of the European Union Directive Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs EC European Commission Economic Review “ The Economic Review of Industrial Design in Europe ”, January 2015 Enforcement Directive Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights EPO European Patent Office EU European Union EUIPO European Union Intellectual Property Office EUTM European Union trade mark EUTM Regulation Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark Fees Regulation Commission 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 Hague System Hague System for the International Registration of Industrial Designs Implementing Regulation Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs IP Intellectual property IPR Intellectual property rights Legal Review “ Legal review on industrial design protection in Europe ”, April 2016 Observatory European Observatory on Infringements of Intellectual Property Rights Public Consultation Public consultation “ Evaluation of EU legislation on design protection ”, 18 December 2018 - 30 April 2019 RCD Registered Community Design Regulation Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs UCD Unregistered Community Design WIPO World Intellectual Property Organization

1.Introduction This evaluation aims to provide an in-depth assessment of the overall functioning of the design protection system in the European Union including both EU and national levels. It analyses to what extent the current EU legislation on design protection, consisting of: ·Directive 98/71/EC on the legal protection of designs (‘the Directive’), ·Regulation (EC) 6/2002 on Community Designs (‘the Regulation’), ·Regulation (EC) 2245/2002 implementing the Community Design Regulation (‘the Implementing Regulation’), and ·Regulation (EC) 2246/2002 on fees payable to the European Union Intellectual Property Office (‘the Fees Regulation’), has achieved its objectives in terms of efficiency, effectiveness, relevance, coherence and EU added value. It also aims to assess the degree to which that legislation is still fit for purpose, in particular given the pace of digital transformation and technological development, including the increasing role of digital designs and 3D printing. The evaluation aims to provide a solid evidence base and show whether: (i) the legislation has met its original objectives; and (ii) the EU’s design protection system needs to be improved or updated. On the basis of the evaluation results, the European Commission will decide whether and to what extent the current EU legislation on design protection needs to be reviewed. EU Member States were required to transpose the Directive into national law by 28 October 2001. The Regulation entered into force on 6 March 2002, and both the Implementing Regulation and the Fees Regulation entered into force on 24 December 2002. On 1 January 2003, the European Union Intellectual Property Office (‘EUIPO’) started to accept applications for registered Community designs, with the first date of filing being granted on 1 April 2003. Because the Community design regime and the national design protection systems of the Member States began to coexist and complement each other starting on 1 April 2003, this evaluation covers the period from 2003 up to 2019. No overall evaluation of the Directive and Regulation has taken place since their adoption. The sole exception concerns their transitional provisions on design protection for spare parts (see Section 5.5.1), the evaluation of which was mandated by Article 18 of the Directive, and followed by proposing in 2004 the removal of the option for Member States to retain such protection at national level. However, the relevant Commission proposal did not find sufficient support in the Council and was finally withdrawn in 2014. The Regulation was amended once in 2006 to give effect to the EU’s accession to the Geneva Act of the Hague Agreement concerning the international registration of international designs (see Section 5.6.1). The evaluation covers all 28 countries that were members of the EU in 2019, i.e. including the United Kingdom. 2.Background to the Intervention 2.1.Description of the intervention and its objectives The EU intervention in the area of industrial designs aimed at removing barriers to the free flow of goods by creating a single market for design protection in the EU on two levels: by harmonising national law through the Directive, and by creating a unitary protection title (one right covering the territory of the whole EU) through the Regulation. The intervention was proposed as part of the EU’s efforts to provide a solid framework for industrial property protection, and followed after initiatives on patents and trade marks. The laws of the Member States providing for design protection at domestic level were partially harmonised by the Directive. The harmonisation concerned key aspects of substantive design law without covering procedures. It intended to promote the internal market and prevent EU-wide competition being distorted by ensuring that the conditions for obtaining registered design rights are identical and that those rights confer upon right holders equivalent protection in all Member States. However, it was not possible to achieve agreement on the harmonisation of design protection for spare parts (see Section 5.5). Member States were allowed to retain their existing laws on whether spare parts should benefit from such protection until amendments to the Directive are adopted, although they were only permitted to amend those laws if the purpose was to liberalise the spare parts market. In addition, and as a complement alongside national systems providing protection by means of registered national design rights, the Regulation established autonomous unitary protection for designs in the form of the ‘unregistered Community design’ (‘UCD’) and the ‘registered Community design’ (‘RCD’). The UCD right simply arises by virtue of first disclosure without requiring registration. The RCD is granted and administered by the EUIPO, upon one application made to the EUIPO in accordance with a single procedure under one law. Both RCD and UCD have a uniform effect throughout the EU (see Section 5.2.1). The main objectives of the intervention can be summarised as follows:

·reduce obstacles to freedom of movement for design goods and ensure undistorted competition; ·provide enhanced and effective legal protection for designs; ·create a variable and balanced protection system serving the needs of all actors (in particular both owners and users of designs) and industry sectors; ·improve access to a simple and affordable design protection system, in particular for individual designers and SMEs; ·reduce transactional and litigation costs. The above specific objectives were meant to contribute to the achievement of the overall objective: promoting the contribution of individual designers and encouraging innovation and development of new products and investment in their production. The intervention logic represented on the below diagram (Fig. 1) shows how the EU intervention intended to address these objectives. 2.2.Baseline and points of comparison The situation before the adoption of the Directive and Regulation was characterised by national design legislation of the Member States being widely disparate . Apart from very different formal requirements and procedures under which a registered design right could be obtained, the national laws differed considerably on key substantive aspects. The latter included the conditions for obtaining protection, the nature and scope of rights conferred by the registration, and the term of protection. These large disparities made it very possible that a design right could exist in one Member State but not in another and thus impeded the free movement of goods embodying designs . They also distorted the conditions of competition for companies operating across the EU, to the particular disadvantage of small or medium-sized industries . As the territorial scope of design rights was then limited to the territory of the individual Member States, design products could also be the subject of national rights held by different individuals. This made a division of the internal market possible, constituting an additional obstacle to the free movement of goods . On the other hand, EU applicants were not able to obtain design protection extending in geographical scope beyond the territory of a Member State in a single application. The Benelux countries were an exception: since 1975 they formed a regional area of design protection , which allowed applicants to have their designs registered with the Benelux Intellectual Property Office for the entire area as supranational right. Fig. 1 – Intervention logic The Hague System for the International Registration of Industrial Designs (‘Hague System’), administered by the World Intellectual Property Organization (‘WIPO’), made it possible to obtain at lower overall costs, through one application to WIPO, a design registration in several jurisdictions. However, at that time only half of the Member States were a contracting party to that system . In addition, the use of the Hague System leads only to a bundle of national rights covered by the international registration. The latter can be transferred or renewed as one but the rights obtained remain subject to the relevant national design law in each territory . In the absence of a system offering protection for the whole EU through one application in accordance with a single procedure under one law , companies trading beyond national borders and wishing to gain protection across the EU thus had no choice but to seek protection on a country-by-country basis. That implied a great level of complexity and bureaucracy. The companies were not only required to file numerous individual applications in different languages, but were also required to do this under distinct domestic laws and procedures. The latter often caused considerable delay in the granting of the design right, not least due to complex examination of prior art carried out by some of the offices. In addition, the companies had to pay, at different times, separate registration and renewal fees for all the individual design rights granted. They also usually had to contract a domestic agent for each Member State to properly deal with the local specificities and requirements (including monitoring of the different durations of protection). This generated very substantial additional burden and cost. Finally, the great variation in the level and quality of protection obtained in the Member States resulted in a lack of legal certainty, proving detrimental to investment . Most companies interviewed for the purpose of a prospective study on the future demand for design registration at EU level, carried out for the EUIPO in 2002 before it started design operations, were very happy with the introduction of Community design. Price and the territorial scope of protection were stated as key factors influencing companies’ willingness to opt for registering their designs through the EUIPO in the future . The study also concluded that companies in countries that were not a contracting party to the Hague System, and that wished to register their designs in three or more countries in the EU, were most likely to go immediately to the EUIPO as an easier and less expensive option . The conclusion of that study matches later views of design law practitioners that an RCD will usually be more cost effective than filing for national protection in three or more Member States . Moreover, although individual industrial sectors in the EU have different needs (some of them producing large numbers of designs for products with a short market life where protection involving registration formalities did not constitute an advantage and the duration of protection was of less importance), all sectors were confined to the option of obtaining design protection in registered form with the same duration of protection (with the exception of the United Kingdom which also provided for shorter protection for unregistered designs) . Finally, the territorial limitation of national design protection and different national rules on enforcement made it difficult for design owners operating at the EU level to enforce their rights in an efficient manner throughout the EU .

Conclusions Without the adoption of the Directive and the Regulation the legal framework on design protection, composed of the national laws of Member States, would likely have remained strongly fragmented. It would not have allowed for significant convergence, including on the practices of national IP offices. The persistence of wide disparities in Member States’ national laws, and the limitation of the effect of national design protection to the territory of a Member State, would not have allowed the creation of a single market for goods embodying designs. It would also have severely distorted competition. Considering the number and economic value of design applications in the EU before and after the introduction of the RCD (see Section 3.2), both the acquisition and enforcement of design protection (on a state-by-state basis) across the EU would most probably have been much more difficult, time-consuming and expensive for businesses (in particular for SMEs and individual designers). This would have discouraged the contribution to design excellence and stifled innovation and the development of new products as well as investment in their manufacturing. 3.Implementation/state of play 3.1.Description of the current situation The Member States had to transpose the Directive into national law by 28 October 2001. Given the considerable number and importance of required changes to the widely disparate national design laws of the Member States, only three Member States (Denmark, France, and Italy) were able to meet that deadline. Infringement proceedings for failure to notify transposition measures in time were opened by the Commission against 12 Member States. Seven of those proceedings were referred to the Court of Justice of the European Union (‘CJEU’). The transposition process by all the Member States was completed on 1 June 2004. All new Member States have transposed the Directive into their national laws. The conformity assessments carried out by the Commission – with the help of supporting studies – raised very little doubt as to the transposing measures’ general compliance with the provisions of the Directive. Only one infringement proceeding was opened against a Member State (Italy) and referred to the CJEU. The generally high degree of conformity of the transposing national law of Member States was also attested by the Legal review on design protection in Europe (‘Legal Review’). The Legal Review further concluded that the implementation of the Directive was largely satisfactory. However, the interpretation of certain provisions, in particular around the very kernel of design protection that is the subject-matter of protection, raised some issues. This was due to the introduction by the Directive of several new legal terms of art, which courts, practitioners and users of the design system needed to deal with. Different interpretations of the subject-matter of protection were also confirmed by collaboration of the EUIPO and national IP offices as part of liaison meetings and convergence projects (see Section 5.2.2 and Annex VI). The Regulation did not require national law to bring it into effect. However, it obliges Member States to designate in their territories a limited number of national courts and tribunals of first and second instance (‘Community design courts’) to perform the functions assigned to them by the Regulation. Member States were expected to communicate a list of Community design courts to the Commission by 6 March 2005. The Commission initiated proceedings against a number of Member States to encourage them to comply with those obligations. All Member States have designated such courts in the meantime (see Section 5.4). 3.2.Use of the design protection system Why firms use or produce designs Design is what makes a product appealing. Visual appeal is one of the key factors that influences consumers’ choices and leads them to prefer one product over another. Well-designed products create an important competitive advantage for producers. Companies that invest in design tend to be more profitable and grow faster. Design rights cover the appearance of a product or part of a product. To encourage innovation and the creation of new product design, there is an increasing need for accessible, modern, effective and consistent legal protection of those rights. According to an analysis carried out for the Organisation for Economic Co-operation and Development (‘OECD’), the use of (a broadly understood) design as an integrated element is highly correlated with innovation outcomes, particularly product and marketing innovations, including new-to-market innovations. The percentage of innovative turnover of product-innovating firms is on average nine times higher in firms using design as an integrated element. The Economic review of industrial design in Europe (‘Economic Review’) analysed why firms use or produce designs. Improving the image of the company; increasing sales; and helping with the development of new products and services were the three most commonly cited reasons as to why design was seen as an important part of business strategy. In response to a survey, respondents from all sectors rated the ‘need to differentiate products from competitors’, ‘adding value to the product’, ‘strengthening product marketing’ and ‘creating a competitive niche’ as the most important reasons for design (Fig. 2). The survey results also indicate that, overall, design is considered to be a slightly more important influence on business success among respondents from the professional, scientific and technical activities sector than among those from manufacturing firms and trade or repair firms. Fig. 2 – Importance of design-related factors, by NACE category Source: Economic Review, p 34. Design-intensive industries In their 2019 study the EUIPO and the European Patent Office (‘EPO’) examined the contribution of IPR-intensive industries to the economic performance of the EU. IPR-intensive industries are defined as those having an above-average ownership of IPRs per employee, as compared with other IPR-using industries. The study also looks specifically at the contribution of design-intensive industries to the EU economy. The top-five design-intensive industries were identified as: ‘Leasing of IP and similar products, except copyrighted works’, ‘manufacture of electric lighting equipment’, ‘wholesale of furniture, carpets and lighting equipment’, ‘manufacture of cutlery’, and ‘manufacture of ceramic sanitary fixtures’. The results of this study show that design-intensive industries play an important role in the EU economy. The IPR-intensive industries generated 29.2% of all jobs in the EU during the period 2014-2016 (direct contribution), with 14% in design-intensive industries. This means that over 30 million Europeans were employed by design-intensive industries in the examined period. Overall, almost 45% of EU GDP is generated in IPR-intensive industries, with design-intensive industries accounting for 16%. Wages in IPR-intensive industries are also higher. The average weekly wage in IPR-intensive industries is EUR 801, compared with EUR 544 in non-IPR-intensive industries. This “wage premium” is 40% in design-intensive industries, where the average weekly wage is EUR 761. IPR-intensive industries also contribute greatly to EU trade. While 89% of EU goods imports consist of products of IPR-intensive industries, an even higher share of EU goods exports – 96% – is accounted for by IPR-intensive industries, leading to a trade surplus of EUR 182 billion in IPR-intensive industries, of which almost EUR 67 billion is generated by design-intensive industries.

Increasing levels of Community design registrations Respondents to the open public consultation “Evaluation of EU legislation on design protection” (‘Public Consultation’) were almost unanimous in praising the EU design system for making it simple and affordable to register Community designs (see Section 5.2.1). This favourable opinion is reflected in the demand for RCDs, which has been steadily rising since the launch of the Community design registration system in 2003 (Fig. 3) to reach over 1.4 million design filings by the end of 2019 and about 4 designs per application on average. RCD filings grew by 6.5% annually between 2003 and 2019. More than 813 000 RCDs were in force on 1 January 2020. These numbers prove the successful uptake of the Community design protection system, as also recognised in the literature. In the last 10 years, most of the direct RCD filings (filings lodged directly with the EUIPO) continued to originate from within the EU, which had an average share of almost 72% of total worldwide filings from 2010 to 2019. However, between 2003 and 2019 the EU share fell steadily while the United States and China consistently increased their filing shares (Fig. 4). If we look at the top-10 direct RCD applicants and top-10 global direct registration owners, we see that half of the positions in the rankings are held by non-EU enterprises. Source: EUIPO data Fig. 3 – Global filing volumes of registered Community design rights (RCD) Fig. 4 – Dynamic share of total direct RCD filings

Source: EUIPO data A 2015 study on the use of RCDs concluded that most RCD applications were concentrated in low-tech areas such as furnishing in Class 6 of the Locarno Classification, articles of clothing and haberdashery in Class 2, and packaging in Class 9. The latest statistics also list Class 6 on the top of the ranking of most filed classes, followed by Class 2. However, these two classes are followed by high-tech products falling into Class 14, encompassing recording, telecommunication or data processing equipment, which had the highest average annual growth rate among the top-10 classes. The latter is particularly relevant as Class 14 also covers graphical user interfaces (‘GUIs’) and icons for computers in sub-class 14-04. As analysed in a 2017 study on digital design protection, and confirmed by latest EUIPO data, RCD filings in that sub-class also increased significantly, evidencing the growing importance of digital designs. The relatively high concentration of RCDs in the Locarno Classes 6 and 2 is considered notable as they represent quite different categories of design products (fashion items with a short life cycle and the much longer-lived category of furniture). This can be seen as confirmation that EU design legislation works for both categories of products, creating a variable and balanced protection system serving the needs of different industry sectors. Although the way in which design rights are used in the various industries can differ widely according to the filing strategy, firms considered EU design legislation to be a “game changer”, offering relatively strong protection suitable to their needs. National registrations The EUIPO reports that more than 730 000 RCDs were in force on 1 January 2018. By comparison, data obtained through a targeted questionnaire prepared by the Commission and addressed to national Intellectual Property Offices (‘the IPO Questionnaire’) show that more than 300 000 designs were in force on that same date in France and Germany. In other Member States, the registration numbers were much lower. For example, in the United Kingdom there were around 60 000 designs in force; in Spain around 30 000; in Poland and Austria around 10 000; in Croatia, Czechia, Hungary and Romania between 3 000 and 4 000; and in Cyprus, Estonia and Latvia less than 500. The Legal Review thoroughly analyses the national filing trends. It refers to the increased popularity of the Community design system and to the EU becoming a contracting party to the Hague System as the main factors impacting the filing volumes on the national level. Changes in global volumes of national filings (Fig. 5) show that despite some fluctuations caused by these events, the overall number of national filings remains significant, balancing around the threshold of 120 000 applications in the past 10 years. Fig. 5 – Filing volumes of national design rights Source: EUIPO based on data provided by the Member States for DesignView Overall increase in filing numbers and in economic value represented by filings A comparison of the total numbers of national design applications before the start of the RCD in 2003 with the total numbers of national and RCD applications after that start shows a clear and substantial net increase (with a steady increase from year to year) in design applications overall. This trend can be observed whether we take the total number of applications covering only the 15 Member States that were part of the EU in 2003, or the total number of applications covering all 28 Member States (as done in Fig. 5). National applications might have been substituted by RCD applications to a considerable extent after introduction of the RCD. However, it must not be overlooked that the resulting RCD registrations represent a much higher economic value for right holders because of their EU-wide scope of protection. They also constitute perfect evidence for increasing economic activity within a better functioning internal market. All this proves that the overall objective of the EU legislation on design protection, i.e. to encourage innovation and development of new products, has been achieved. 3.3. technological development and awareness of design protection Several unforeseen factors and unintended consequences have been identified. The unforeseen factors concern first and foremost technological advancement. Software-based innovation and the growth of artificial-intelligence (‘AI’)-related technologies have allowed connected devices with electronic display screens to become commonplace. The importance of GUIs and icons in enabling user interaction with all types of such devices (e.g. smartphones, home appliances and medical devices) led to a significant increase in digital design filings as shown above by RCD statistics (Section 3.2). This growth also reflects the increasing role of such new design types as strategic assets for firms. The development of AI can also prove challenging in other respects, as evidenced by the EU submission to the WIPO public consultation on AI. The opportunities and challenges brought by 3D printing have also been growing. Its impacts on design protection were assessed in the Economic Review, Legal Review and the study on “The intellectual property implications of the development of industrial 3D printing” (‘3D Printing Study’), with their main findings summarised in this report. 3D printing appears to be a promising technology for multiple sectors of EU industry, including for developing new business models. For instance, this is the case for the circular economy, with 3D printing allowing the local manufacturing of repair parts. It can also support the development of personalised manufacturing. The COVID-19 crisis has shown that 3D printing can represent an opportunity when there is a need to quickly and easily manufacture critical goods. Therefore, when assessing the relevance of the design acquis, this report assesses both the protection of designers’ rights and how the design acquis ensures (or fails to ensure) that full advantage of new technologies is taken. Other unforeseen factors include economic factors (such as the development of supply chains and the emergence of new business models, e.g. collaborative platforms) and legal factors (e.g. interaction with other sets of rules), both of which can prove challenging for design protection. This evaluation brought evidence of two other main factors that significantly impacted the functioning of the EU design protection system.

Firstly, the failure of the Commission’s proposal to harmonise protection rules for visible spare parts maintained segmentation of the internal market. This issue is addressed in Section 5.5. Secondly, insufficient awareness of the advantages of obtaining design protection led to potential underuse of the design protection system. According to the Economic Review, many companies, in particular SMEs, are not aware of industrial designs and how they can help their business. Trade associations often lack knowledge of the design protection systems and are not able to provide support to their member firms on such issues. The Review recommends establishing a best practice for the benefit of small businesses and start-ups to promote knowledge on design protection. Almost two thirds of the respondents to the Public Consultation agreed that there is insufficient awareness of the availability, benefits and methods of protecting designs in the EU. Respondents agreed that this problem affects young designers and SMEs in particular. Some respondents indicated that the fashion and clothing industry was a sector where low awareness of design protection benefits can have particularly detrimental effects. Respondents also indicated that future awareness-raising activities should not only focus on explaining the benefits of design protection, but also seek to clarify the differences between design rights and other IP rights, in particular trade marks and copyright. Increased efforts to raise awareness and promote the use of designs were also among the recommendations presented by the European Design Leadership Board. Numerous awareness-raising activities and campaigns are already being carried out, both by the EUIPO (most notably the DesignEuropa Awards) and national IP offices. The EUIPO is supported in this work by the European Observatory on Infringements of Intellectual Property Rights (‘the Observatory’) and its public awareness working group. Some of the activities target SMEs in particular; e.g. the EUIPO’s Academy provides an SME learning area. Moreover, the EU IP Helpdesk offers many training courses and materials to help European creators and innovators make the most of their IP assets, including designs. 4.Method 4.1.Short description of methodology The evaluation of the EU design protection system was launched in 2014, and involved wide groups of stakeholders in the EU. This report is based on various sources of information, most importantly on two external studies – the Economic Review and the Legal Review, which both relied on quantitative and qualitative assessment (see Annex III for details). It also accounts for the results of the 3D Printing Study. In addition, the report draws from collaborative efforts of the EUIPO and national IP offices in the framework of liaison meetings and convergence projects (see overview in Annex VI). This report also draws on many other studies and reports prepared by the EUIPO and the Observatory, and other available studies and data collections prepared by national or international public authorities, including in particular national IP offices, academics or other stakeholders. It also takes into account feedback received from the stakeholders on the Evaluation Roadmap, and in the course of the Public Consultation, bilateral meetings and public conferences. Several discussions have also taken place with Member States representatives in the Commission Expert Group on Industrial Property Policy. 4.2.Limitations and robustness of findings Although the evaluation was carried out during a significant timespan (over 5 years), allowing for thorough analysis and wide involvement of all the interested stakeholders, gathering data on some aspects of the functioning of EU legislation on design protection proved difficult. This is due to the different protection tools (see overview in Section 5.2.1) and the two-tier system (EU and national). There is also significantly less empirical evidence on the economic effects of design rights than for other IPRs. Lack of monitoring arrangements in the Directive and Regulation made it particularly difficult to detect clear causal links between the intervention’s impact and the evolving reality of design protection in the EU. These limitations occurred in particular when comparing the baseline situation with the current one. Since it was impossible to carry out a reliable estimation of costs and duration of national proceedings before harmonisation, this report focuses on qualitative data, in particular feedback received from stakeholders both recently and in the preparatory period preceding adoption of the EU legislation on design protection. In relation to the assessment of costs of the functioning of the EU protection system for designs (see also Annex V), the report was only able to focus on analysing fixed administrative fees. Costs of legal or other professional assistance, both for obtaining design protection (preparation of the application strategy, assisting in the registration process) and enforcing it (negotiations, representation in judicial or administrative proceedings) vary significantly, depending on the case at hand and preference of the applicant/right holder. These costs cannot thus be estimated and compared in a reliable manner. Another significant limitation was the availability of data on case-law (e.g. volumes and characteristics of cases lodged over time), both with regards to cases heard by the Community design courts and other national courts. Mitigating measures were taken to compensate for the lack of quantitative data through increased inputs from interviews with stakeholders and the network of legal experts in the Member States, who contributed to the analysis. Finally, there were some concerns on the methodology used in the Legal Review in terms of the selection of the Member States taking part and the stakeholder surveys and interviews which contributed to it. These concernswere raised in legal literature. 5.Analysis 5.1.Overall Functioning of the EU system for design protection 5.1.1.General feedback on the functioning of the EU system for design protection

The Legal Review concludes that the harmonisation of design protection through the Directive and the establishment of a complementary unitary system by the Regulation have been largely successful in creating an internal market for goods embodying designs, by removing many divergences hitherto present among national design systems. The Review points out that, compared with the situation prior to these two instruments, it is now cheaper and easier to obtain design protection across the EU (see Section 2.2). The greater harmonisation of the level of protection, and the lower cost of obtaining protection, are positive factors in the creation of a system which encourages innovation, product development and investment in manufacturing. The Legal Review also indicates that there are clear benefits to be drawn from the pan-EU registration system, especially in terms of cheaper registration (usually) and administration costs; less delay than multi-jurisdictional applications; and overwhelming filing/grant success rate (see Fig. 4 and 5). However, the Review also points to several remaining challenges that need to be addressed. Although the Economic Review confirms that the design definition is the same across the EU, it points to procedural differences, and proposes eight further actions that could be considered to improve the design protection system. The Economic Review also looked at the degree of satisfaction with the functioning of the EU design protection system. The respondents to the survey conducted as part of this Review had higher satisfaction levels for national protection than EU protection. The latter result is likely influenced by companies that are dissatisfied with the rules on protection of visible spare parts in the EU. Most respondents to the Public Consultation considered that the design protection system in the EU works well or very well. Representatives of authorities, researchers and owners of designs were most positive about the functioning of the design protection system in the EU, with roughly 90% positive answers. A vast majority of SMEs and advisers also considered that the system is functioning very well or rather well. On the other hand, users of designs of others were split on the issue, while a slight majority of other respondents considered that the system is not functioning well. The respondents particularly appreciated the predictability, speed and cost effectiveness of the EU protection systems for designs. They also appreciated the high degree of harmonisation and useful complementarity between the national and unitary titles. On the negative side, the respondents pointed to the remaining harmonisation gaps (e.g. rules on spare parts protection) and need for improvements and modernisation of these protection systems. A few respondents believed there is lack of legal certainty resulting from the lack of substantive examination of design applications (see Section 5.3.3). 5.1.2.General feedback on the achievement of the EU intervention’s objectives In the context of the Public Consultation, all the objectives of the EU designs system were seen as important by a vast majority of all categories of stakeholders (roughly 90% of answers were of this view). Among other objectives that should be pursued, the respondents indicated the need for further harmonisation, in particular in relation to: (i) spare parts protection; (ii) improving cooperation between public authorities to stop imports of counterfeit goods; (iii) abuse prevention; and (iv) preventing the creation of product monopolies. Respondents were almost unanimous in praising the EU design system for making it simple and affordable to register Community designs. They considered that the system helped in promoting innovation and is accessible to SMEs and individual designers. They also considered that it helps in preventing counterfeiting and they appreciated the simplified enforcement of the UCD. Most groups of respondents thought that the system provides uniform protection everywhere in the EU and allows for free circulation of products in the internal market. Users of the designs of others considered that the system helps to acknowledge and protect the marketing value of a design, and fosters innovation through competition by encouraging the creation of new designs. They also agreed that the system allows the design right owner to receive a fair return on their design investment. On the other hand, they indicated that at times it may be difficult and/or costly to find out if a specific design is protected, leading to uncertainty on what actions are permitted. 5.2.Protection tools 5.2.1.Different ways of protecting designs Different design rights As explained in Sections 2.1 and 2.2, EU legislation on design protection created the possibility for designers to rely on either registered or unregistered protection. In order to protect their designs in the EU they can opt for the following protection titles: ·a registered Community design (RCD), a design right registered with the EUIPO, providing uniform protection valid in the entire EU (unitary title), for a period of 5 years (renewable up to 25 years); ·a national registered design, a design right registered with a national IP office, providing valid protection in one Member State (with the exception of the Benelux countries, where a design right registered with the Benelux Office for IP will cover three Member States: Belgium, Luxembourg and the Netherlands), for a period of at least 5 years (renewable up to 25 years); ·an unregistered Community design (UCD), a right protecting a design if made available to the public, without the need for registration; it provides uniform protection valid in the entire EU (unitary title), for a period of 3 years. Although the Directive allows Member States to protect unregistered designs through national titles, the United Kingdom was so far the only Member State that offered this type of protection. For an RCD, designers can choose between filing an application directly with the EUIPO, or with their national office, which transfers it for examination to the EUIPO. For national registered design rights, designers need to file their application with the respective national office (including the regional Benelux Office for IP). Designers can also use the Hague system to obtain protection in multiple territories, including in some individual EU Member States and/or the whole EU (see also Sections 2.2 and 5.6.1). Various aspects of registration procedures for Community and national designs are examined in Section 5.3. Factors influencing the choice between different rights and registration strategies Under the current design framework, designers can choose between Community or national protection, and between a registered or unregistered design right. They may also opt for a combination of these protection modes depending on their priorities. They can also follow different filing strategies (national, regional or international registration procedures). According to the Public Consultation, relying on an RCD to protect one’s design is the most popular option, followed by national designs and obtaining protection via international registration. Many factors can play a role when deciding the type(s) of registration.

The most relevant factor appears to be territorial coverage. The type of protection sought will depend on the territory in which the applicant wants to operate. This surely plays an important role in the success of the RCD, with many companies operating in several Member States. International registrations can also be justified by the need to cover territories outside the EU. However, when companies want to focus on the domestic market, national designs appear more appropriate. This does not necessarily mean that SMEs preferably rely on national designs. Figures from the Public Consultation show that SMEs rely first on RCDs (62% of SME respondents) and then on national designs (54% of SME respondents). However, it appears from the Legal Review that SMEs are indeed more likely to rely on national designs than bigger companies (36% of companies with between 10 to 24 employees use national designs against 3% of companies with more than 500 employees). The national design system therefore remains attractive, particularly for smaller local companies, which are more likely to prefer registration with their “home” national office. It also appears that a range of options as regards the types of registration is used by SMEs. This range of options thus appears effective and relevant for SMEs and a good tool allowing them to tailor their IP strategy depending on their specific needs. The territorial coverage is closely linked to the level of fees, which appears to be the second most important criterion (see Section 5.3.6). Here again, the attractiveness of the RCD seems to derive from its relatively low fees, correlated with its wide territorial coverage. Although less determinant, factors such as an easy procedure and speed of the procedure also play a role. Factors influencing the decision to opt for design protection According to the survey of the Economic Review and the Public Consultation the most significant factor in opting for design protection, irrespective of the method of protection, is the level of protection obtained. Key benefits of obtaining design protection identified in the Public Consultation include: (i) the right to prevent others from using a design; (ii) the legal certainty as regards the disclosure and ownership of a design; (iii) the value brought to the product and the brand; and (iv) the return on investment. The most significant costs relate to the registration and renewal process (see Section 5.3.6), the litigation costs (see Section 5.4) and costs to prepare registration. In general, the benefits of design protection are seen as outweighing its costs. Considering the results of the Public Consultation, this is particularly the case for Community designs (for UCD (95%) and RCD (93%)) and international registrations (80%). However, opinions remain divided (50%) as regards national designs. Finally, it is not uncommon to rely on other IPRs, such as trade marks, patents or copyright, to protect designs. Other IPRs can be used in addition to – or instead of – design protection. Factors such as awareness, the term of protection or costs can play a role in that respect. Respondents to the Public Consultation who do not actively seek protection and those who rely on unregistered protection were asked about their reasons for not registering a design. Among the main reasons, they indicated that: (i) protection by UCD or other IPRs (e.g. trade marks or copyright) was sufficient for their needs; (ii) registration of a design is too expensive; or (iii) enforcing a design right is too complex and/or expensive (see Section 5.4). Some designers also opt not to obtain design protection, as they consider that in their specific case such protection will not bring sufficient added value, e.g. because of the business model of the company, the characteristics of the product (e.g. a very-short-life-cycle product) and the characteristics of the market within which the company operates. Opting for unregistered Community design The rights conferred by the UCD are limited compared to those bestowed by the RCD. The UCD confers on its holder the exclusive right to use it and prevent any third party without the holder’s consent from using it, but only if the contested use results from copying the protected design (Article 19(1) and (2) of the Regulation). The Economic Review reported that 8% of respondents who replied to the survey were relying on protection offered by the UCD. The Review also looked at factors that could discourage the use of registered design protection in favour of UCD protection. The most important factors were the avoidance of fees, administrative burdens, and the complicated nature of the registered protection process. Similar feedback was received through the Public Consultation: respondents creating or owning designs considered the lack of any formalities as the chief reason for choosing UCD protection. Most respondents to the Public Consultation considered that the UCD provides a useful legal protection against unauthorised copying. Respondents described it as an attractive tool for protecting short-cycle or seasonal products, and thus particularly useful in some specific industry sectors (e.g. fashion, textiles and clothing, eyewear, furniture and furnishing). The lack of formalities and registration costs also seem to make UCD generally attractive for SMEs and young designers. Conclusions EU legislation for design protection has proven to be effective in providing an appropriate range of relevant and coherent protection tools. It appears well-suited to serve the needs of the various types of companies and design industries by offering tailor-made protection. The possibility to choose between protection at national, international or Union level, and as to the latter between protection in registered or unregistered form, or to seek for a combination of protection means, reflects that well. Finally, the success of the RCD, and the fact that the variety of protection methods allows designers to develop a tailor-made IP strategy, contribute to the EU added value of the design acquis. 5.2.2.Protection requirements and scope of protection Definitions of ‘design’ and ‘product’ The Directive and the Regulation introduced definitions of ‘design’ and ‘product’ which are key for determining the subject-matter of design protection. A design refers to the appearance of a product resulting from certain features. A product is to be understood as any industrial or handicraft item. As indicated in Section 3.1, the Legal Review pointed to certain confusion in relation to the definition of the subject-matter of protection, involving the potential of negatively influencing the accessibility of the design protection systems. Most respondents to the Public Consultation considered the existing design and product definitions clear or very clear. However, in the light of the growing role of digital designs several respondents saw in particular a need to clarify that virtual designs, animated designs and graphical user interfaces are covered by those definitions. The issue of digital designs raises the question whether they can be understood as products and also whether their elements are covered by the design notion (e.g. is animation a feature?). Collaboration of the EUIPO and national IP offices showed that, for various types of designs, the subject-matter of protection is either not clear or interpreted differently in different Member States. Divergent practices were noted for designs consisting of more than one item (a set of articles) and designs in different states. There were also divergent practices when it came to interpreting the meaning of ‘get up’ within the notion of product, and the availability of design protection for interior design (e.g. can the interior of a shop be protected as a design?). Some Member States consider interior design as a kind of get up. The issue of interior design concerns the interface with other forms of IP protection and is further addressed in Section 5.2.7.

Clarity and the extent to which the subject-matter of protection is future-proof are of crucial importance for the accessibility of the EU design protection system and for encouraging innovation and the development of new products. The potential for improving and modernising the acquis in that regard requires thorough consideration. One option to be explored in that context could be to provide a more systematic categorisation of eligible design types, together with tailored representation requirements (see Section 5.3.1), similar to what was done for trade marks in the recent reform. Definition of ‘complex product’ and visibility requirement for component parts A ‘complex product’ is defined as a product that is composed of multiple replaceable components permitting its disassembly and re-assembly. To be protected, the design of a ‘component part’ of the complex product must be ‘visible’ while the product is in normal use. The Legal Review suggested that the complex product definition (together with component parts) be retained in order to deal with the spare parts market. However, because of indications of confusion reflected in some court decisions rendered at national level, the Legal Review proposes that this definition should be restricted to complex machinery. Such an approach was also supported by some stakeholders in the Public Consultation. The Legal Review also opted for clarifying the extent of the requirement for designs to be ‘visible’ (‘visibility requirement’). It recommends that the relevant EU law should reflect the general visibility doctrine as developed in the Biscuits Poult case. In particular, the Legal Review recommends that the definition of a ‘design’ should signify that all designs should be ‘visible’ in order to be protected, and that the assessment of such visibility should be done from the perspective of an ‘informed user’. Although most respondents to the Public Consultation believed that the requirements for design protection were clear or very clear, many believed the opposite. In particular, many respondents called for clarification of the applicability and assessment of the visibility requirement. While some respondents believed that a legal definition should be introduced, others opted for clarification through a guidance document or further case-law, or called for removing the visibility requirement altogether. Some of them strongly criticised the Legal Review for favouring the extension of the special component parts’ visibility requirement into a general requirement for designs relating to other types of products. Such an extension would indeed increase hurdles for design protection without justification and be contrary to the interests of designers, the design industry and design holders. The current rules seem to be appropriate and coherent. A design or a design feature does not need to be visible at any point in time or in a certain situation in order to attract design protection. The only exception concerns component parts which have to be visible while in normal use to be protected. This issue is not to be confused with the fundamental principle governing the subject-matter of design protection whereby only design features which are disclosed by way of design representations can enjoy protection. The concepts of ‘informed user’, ‘overall impression’, ‘design freedom of the designer’, and ‘individual character’ RCDs, UCDs, and national registered designs are protected to the extent that they are new and have individual character. Three concepts were introduced to assess whether a design has the required ‘individual character’. These are the concepts of the ‘informed user’, the ‘overall impression’ and the ‘design freedom of the designer’. The flipside of the individual character test is used to assess the scope of protection of designs, and thus infringement. According to the Legal Review, there are no major problems with the individual character test and the concept of informed user, taking account of the case-law rendered at EU and national level. However, the Legal Review points to some confusion in interpretation observed in relation to the role of the product nature and industry sector in determining the individual character, and opts for clarifying in the law that the product nature and sector is to be considered. The number of respondents to the Public Consultation who believed that the scope of design protection is not clear or very unclear was higher than those considering it clear or very clear. Some respondents indicated in particular that the notions used to describe the scope of protection are very abstract and thus hard to clarify, with their interpretation depending very much on the product category. Some respondents explained that it is not predictable if a new design has individual character, especially if it consists of a new version of a previously existent design. On the other hand, some respondents disagreed with the Legal Review that changes of the legislation are needed at this stage and claimed that CJEU case-law should be allowed to develop further. While the CJEU has provided some important guidance on the concept of an ‘informed user’ (for example in the Grupo Promer Mon Graphic v. OHIM – PepsiCo case and the PepsiCo v. Grupo Promer case), the respondents to the Public Consultation still believed that providing further clarification could be of help. According to recent research, in relation to the concepts of individual character and infringement, national courts transitioned to the new EU design law well and coherently. With the help of CJEU case-law, over time, those national courts which did not apply the law well finally improved and began to apply it correctly. However, coherence in this area of EU design law is still not fully achieved. There are a few courts that are still misapplying the law. The authors suggest that the EU courts’ case-law be codified, or that guidelines be issued to clarify that risk of confusion is not the test and that the informed user is not the average consumer but a unique, fictitious person. Designs dictated by their technical function Design rights do not give protection to designs dictated by their technical function, designs of interconnections, and designs contrary to public order or morality. Despite the guidance provided by the CJEU in the Doceram case regarding the notion of ‘technical function’, the respondents to the Public Consultation would like to see some more clarification that would ensure, in particular, that this notion is construed more narrowly. No product-specific protection As confirmed by the CJEU, the scope of protection of a Community design extends to designs of other product categories, because neither Article 10 nor Article 19 of the Regulation, like Articles 9 and 12 of the Directive, limits protection to a specific product sector. Community design protection therefore extends to ‘any design’ which does not produce on the informed user a different overall impression. This is also confirmed by the explicit provision contained in Article 36(6) of the Regulation, according to which the product indication must not affect the scope of protection. As referred to in the Legal Review, and pointed to by some stakeholders in response to the Public Consultation, some national jurisdictions still seem to lean towards limiting the scope of protection on account of the product indication. Such diverging practices at national level with respect to the scope of protection of registered designs gives rise to legal uncertainty and conflicts with one key objective of the Directive, which is to ensure that registered design rights confer upon right holders equivalent protection in all Member States. The responses to the Public Consultation showed that 70% of the respondents consider the need for harmonising the relevance of the product indication for the scope of protection to be of fundamental importance for: (i) ensuring a smooth interplay between the Community design system and the parallel national design protection system of the Member States; and (ii) establishing a level playing field for businesses in the EU.

Commencement of the protection conferred by a UCD According to Article 11(1) of the Regulation, a UCD arises without registration formalities on the date on which the design was first made available to the public within the EU. A design is considered to have been made available to the public within the EU if it has been published, exhibited, used in trade, or otherwise disclosed in such a way that these events could reasonably have become known to the circles specialised in the sector concerned, operating within the EU (Article 11(2)). The language in Article 11 does not make explicit the geographical location of the relevant disclosure, and seems to leave open the possibility that a UCD comes into being if the disclosure occurs outside the EU. This could be regarded as consistent with Articles 5 to 7 of the Regulation, which allow for worldwide prior art disclosures to destroy the required novelty of a Community design, provided they have become known in the EU. However, Article 110a(5) of the Regulation provides that any design which has not been made available to the public within the territory of the EU does not enjoy protection as a UCD. Because of that clear provision, the German Federal Court of Justice found in a much noticed decision that the first disclosure of the design must indeed take place in the EU territory for a design to attract protection as a UCD. However, the question arises whether Article 110a(5) was meant to apply to new EU Member States only given that the whole Article 110a is titled “Provisions relating to the enlargement of the Community”. In its decision, the German Federal Court of Justice did not deal with that issue but rather considered the position that disclosure in the territory of the EU is required as acte clair without there being a need to make a reference to the CJEU. From the beginning, the EUIPO has taken the view that disclosure must take place within the territory of the EU in order to create a UCD. A recent reference to the CJEU from the Intellectual Property and Enterprise Court in the UK seeking clarification on this issue was withdrawn, and therefore the CJEU did not have an opportunity to render an authoritative view on this issue. Some respondents to the Public Consultation referred to existing legal uncertainty on this issue and asked for clarity to be provided when reforming the legislation. However, opinions were divided on the question of whether designs first disclosed outside the territory of the EU should give rise to a UCD. Some of the respondents argued in favour of a narrow approach (requiring disclosure within the EU territory) so as not to enable foreign companies and designers not doing business in the EU to profit from design protection in the EU and prevent the Community design registration system from being undermined by the creation of UCDs based on the basis of worldwide disclosures. Other respondents referred to the need to follow a broad approach, allowing in particular EU industries to obtain the earliest possible protection for their designs when first disclosed (such as at international trade fairs), even if the territory of disclosure is not that of the EU. However, it is clear that also allowing for the creation of a UCD on the basis of disclosure occurring everywhere outside the EU would imply nothing less than giving automatic rights to the rest of the world without any reciprocity or possibility of monitoring to the clear detriment of EU industries. The argument that EU industries might also wish to profit from disclosures outside the EU dwarfs in comparison. Conclusions Uniform definitions and protection requirements introduced in the Directive and Regulation have contributed to the effectiveness and added value of EU legislation on design protection. However, the legislation’s relevance is somewhat diminished by not being fully adapted to the digital age. This is especially true for the definition of the eligible subject-matter of protection. Therefore, more guidance could be considered on the notion of a ‘product’ with a view to making the system more accessible and adapting it to the needs of emerging industry sectors (e.g. digital designs). Despite current rules appearing appropriate and coherent, more clarity also appears to be needed on the visibility requirement. Application of the individual character test should be further monitored, in particular given the clarifications provided in recent case-law. Finally, coherence and level playing field for businesses and designers in the EU could be improved. The unclear relation between the scope of protection conferred by registered rights and product specification and lack of alignment between relevant provisions of Directive and Regulation constitute a problem. The existing ambiguity as to the relevant geographical location of disclosure for the creation of a UCD also creates unnecessary legal uncertainty and distorts coherence between registered and unregistered Community design protection. 5.2.3.Rights conferred A design confers on its holder the exclusive right to use it and to prevent any third party without the holder’s consent from using it (Articles 12 of the Directive and 19 of the Regulation). As regards a UCD and an RCD subject to deferment, the rights only exist if the contested use results from copying the protected design. The Legal Review concluded that the design rights and limitations did not cause any major difficulty – except for 3D printing and spare parts – and that related provisions have been properly implemented, with slight textual variations. The results of the Public Consultation also show some concerns about the issues of 3D printing and goods in transit. As regards 3D printing, respondents to the Public Consultation were divided on whether design rights provide sufficient protection against copying a protected design by means of 3D printing. Their main concern was the lack of clarity around design protection and 3D printing, in particular as regards the scope of the rights, including the private use limitation. The 3D Printing Study examined the relation between 3D printing and IPRs. Regarding design protection it reached three main conclusions. Firstly, while a computer-aided design (‘CAD’) file as such cannot be protected as a design, the digital model included in the CAD file can receive protection under design law. Secondly, although an individual can rely on the private use limitation for 3D printing carried out privately and for non-commercial purposes, this exception does not seem to apply to supporting activities carried out by intermediaries (e.g. printing or scanning by 3D-printing bureaux or acts of uploading and sharing of 3D printing files). Finally, it remains unclear whether acts of uploading, hosting and downloading a CAD file on a publicly available platform constitute a design infringement. Against that background, the 3D Printing Study suggested adapting the scope of the design rights (including limitations) and enforcement measures. This is in line with the recommendations of the Legal Review and the recommendations proposed by some respondents to the public consultation. Although 3D printing is not widespread at the moment, results from the Public Consultation show that stakeholders see a need to tackle the issue now, as they believe it could become potentially damaging for designers in the future. Legal certainty is also necessary to ensure the development of 3D printing, which offers good opportunities to both designers and design users (see Section 3.3).

Results of the Public Consultation also show that a large majority of respondents (90%) are in favour of enlarging the scope of design rights to prohibit the transit of goods that infringe design rights registered in the EU through EU territory, even if the goods are not intended to be placed on the EU market. This was also considered a key issue to ensure the efficient enforcement of design rights. In the joined Philips and Nokia cases, the CJEU decided that transit of goods through the EU territory cannot constitute an infringing act, unless the right holder can prove that they are intended to be put on sale in the EU, clarifying what evidence can be presented in that respect. However, stakeholders report that despite these clarifications, the threshold for evidence required by the courts may remain unreasonably high, as right holders are often not in possession of information as to the country of final destination of goods in transit. The situation of goods in transit has been clarified as regards trade marks: both the Trade Mark Directive (‘TM Directive’) (Article10(4)) and the EU Trade Mark Regulation (‘EUTM Regulation’) (Article9(4)) provide that trade marks’ holders may prevent third parties from transiting goods infringing EU trade marks (including the packaging) through the EU’s territory. The declarant or holder of the goods can defeat this by proving that the trade mark holder cannot prohibit the placing of the goods on the market in the country of final destination. The burden of proof is therefore on the contested goods’ holder or declarant, not on the trade mark owner. The clarification as regards trade mark law has been welcomed, and a large proportion of respondents to the Public Consultation considered that design law should be aligned to trade mark law for goods in transit, including concerning guarantees to avoid hampering the free flow of trade in legitimate goods (e.g. applications for identical or quasi-identical protected designs and a possibility for the other party to prove that the design is not protected in the country of final destination). Conclusions In general, the rights conferred by Community and national designs are considered to provide effective protection and achieve the objective of the design acquis. The scope of design rights also appears relevant for achieving the objectives of the design acquis. However, gaps have been identified. Firstly, the rights conferred might not be robust and flexible enough to appropriately deal with the opportunities and challenges arising from new technologies, such as 3D printing. Secondly, the current scope of design rights does not allow for an effective fight of counterfeiting in the context of goods in transit and lacks coherence with trade mark rules. 5.2.4.Defences to infringement Limitations Articles 13 of the Directive and 20 of the Regulation provide a range of identical limitations to the rights conferred by the design rights. These limitations include: (i) acts done privately and for non-commercial purposes; (ii) acts done for experimental purposes; and (iii) acts of reproduction for the purpose of making citation or of teaching. Additional limitations exist, in both texts, for the equipment of ships and aircraft, and acts needed to repair such craft. The Legal Review reported that Member States have properly implemented these limitations, with some minor differences. The Legal Review also noted that courts in France and the Netherlands have considered that, in addition to the limitations prescribed in the Directive, design rights should be limited where freedom of expression is concerned, e.g. where artistic or satirical works are using registered designs to make a statement. The CJEU’s Nintendo decision provides guidance on the scope and conditions of the citation limitation. The CJEU clarified in particular that acts of reproduction include two-dimensional representation of a product corresponding to a design, and provided an autonomous EU interpretation of the notion of citation. While some voices expressed strong objections to the Court’s judgement, others considered it to be necessary and appropriate to counterbalance the far-reaching scope of design protection. As exemplified by a respondent to the Public Consultation, there should be no reason to prohibit representing a design in order to refer to it in the context of commercial communication, as long as that is done in accordance with honest practices. This argument is all the more relevant for ensuring coherence with trade mark and copyright law, where this is allowed. Although clarification was made in that respect through case-law, legal certainty would benefit from a clarification in the law. The catalogue of limitations in design law is sometimes considered too narrow, in particular when compared to exceptions and limitations set in copyright and trade mark law or in the light of the recent Nintendo decision. At the same time, are concerned about the consequences of the potential expansion of limitations, in particular of the private use limitation, in particular when considering technological developments such as 3D printing. If 3D printing becomes more common in the future, some fear that the private use limitation would lead to de facto immunity for 3D printing activities. To address this issue, some respondents to the Public Consultation suggested modifying this limitation by requiring the 3D printing acts to be compatible with fair trade practices and not unduly prejudice the normal exploitation of a design. This is in line with the conclusions of the 3D Printing Study which suggested adapting the private use limitation along the lines of the three-step test in the Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPS’). However, this solution was criticised as ineffective by some representatives of right holders in their feedback to the Public Consultation. Exhaustion of rights, rights of prior use and government use Article 15 of the Directive and Article 21 of the Regulation provide that the design rights do not extend to acts relating to a design-protected product when that product has been put on the market in the Union with the right holder’s consent. Article 22 of the Regulation provides that a right of prior use will exist for any third party who can establish that before the date of filing or, when appropriate, the date of priority, it has in good faith commenced use, or made serious preparations to that end, of a protected design. While there is currently no such provision in the Directive, a large majority of respondents to the Public Consultation are in favour of harmonising the right of prior use. Article 23 of the Regulation provides that any national provision allowing use of a national design by or for a government may be applied to Community design, to the extent that it is necessary for essential defence or security needs. These provisions have not raised any particular concern so far. Conclusions The catalogue of limitations in EU design law brought coherence and added value by harmonising permissible uses across Member States. However, the catalogue now appears too narrow to effectively strike the right balance between the interests of designers and design users. The catalogue also appears to be incoherent with the system in place for other IPRs. The option of extending the catalogue of limitations could therefore be explored. Although the CJEU clarified the scope of the citation limitation, it could be considered to strengthen this interpretation by embedding it in the legislation. An adaptation of the catalogue of limitations could be considered to ensure it is relevant in view of new technologies. In that respect, the possible reach of the private use limitation in the context of 3D printing should be further assessed, also in coherence with the copyright regime. Finally, given the importance attributed by stakeholders, the appropriateness of aligning the Directive to the Regulation on prior use as defence to infringement could be further explored. 5.2.5.Term of protection As explained (see Section 5.2.1), the term of protection is different for registered and unregistered design rights. RCDs are protected for an initial term of protection of 5 years from the filing date of the application (Article 12(1) of the Regulation). For the national registered designs the initial term of protection can be one or more periods of 5 years from the filing date (Article 10 of the Directive). Both types of design rights can be renewed for one or more periods of 5 years each, up to a total of 25 years. Harmonisation in this field can therefore be considered as already achieved, apart from the specific area of designs embedded in spare parts (see Section. 5.5). However, the IPO Questionnaire confirmed that a few Member States operate with an initial term of 10 years, with three renewal periods, each of 5 years. A large majority of all respondents to the Public Consultation (around 75%) consider the 25-year protection of registered designs to be adequate. Only a minority of all respondents considered the term of protection to be too long (14%, with some suggesting to shorten it to 20 years) or too short (12%, with some suggesting to extend it to 50 years or to align it to the one existing for copyright or trade marks).

UCDs are protected for a period of 3 years from the date on which the design was first made available to the public within the Community (Article 11(1) of the Regulation; see Section 5.2.3). The Public Consultation revealed that a slight majority of respondents (54%) consider this term of protection to be adequate. Respondents in favour of a longer term of protection generally argued that a 5-year term would be more appropriate. Others considered that the beginning of the term of protection should be calculated as starting from the exploitation of the design or the first public use, and not its divulgation. Finally, some respondents suggested allowing conversion of non-registered designs into registered designs (with retroactive effect) or allowing renewal of the term of protection. For both registered and unregistered designs, some stakeholders suggested adapting the term of protection in view of the sector and/or the characteristics of the products (e.g. a longer term of protection for successful, iconic or investment-intensive products, and a shorter term of protection for short-life-cycle products such as fashion items). Conclusions In general, the term of protection for registered design rights appears appropriate, and strikes the right balance to achieve effective protection. However, differences between the provisions of the Directive and the Regulation concerning the initial term of protection for RCDs and national registered designs undermine coherence of the two protection systems. Although some stakeholders are critical of the term of protection for UCDs, most of them still consider it appropriate. Currently, there does not seem to be a strong call or need to review the term of protection for UCDs. 5.2.6.Relation to other forms of IP protection The issue of the relation between design rights and other IPRs has been taken into consideration since the creation of the EU design acquis. It plays an important role in ensuring coherence between the protection granted by design rights and the protection granted by other IPRs. According to the results of the Public Consultation and legal literature, the interaction between copyright and design law appears to be the most problematic. Several respondents to the Public Consultation considered this relationship to be unclear and said it could potentially lead to less reliance on design protection. Results of the Public Consultation also show that an unclear relationship between design law and copyright law can also lead to a circumvention of one right by another. This could for instance be the case when right holders rely on copyright to artificially extend the term of protection, thus undermining the relevance of design protection. Both the Directive (Article 17) and the Regulation (Article 96(2)) provide that a design can be protected by both design and copyright law (‘principle of cumulation’), provided that protection requirements are fulfilled for both these rights. However, the harmonisation achieved by these provisions remains limited, as they specify that the conditions under which such protection is conferred, including the level of originality required, are determined by the Member States. This was justified at the time by the lack of complete harmonisation of copyright law. Although similar trends exist across Member States (e.g. in many Member States originality appears more difficult to prove than novelty), this limited harmonisation led to some discrepancies across the EU. Since the adoption of the Directive and the Regulation, the CJEU has increasingly harmonised copyright law. In particular, the notion of ‘work’ is considered an autonomous concept of EU law that must be interpreted and applied uniformly. This harmonisation has helped shape and clarify the relation between copyright law and design law, as shown by the recent case-law of the CJEU (see in particular Flos, Cofemel, and Brompton). It is still too early to assess how this new case-law will be applied by national courts, and whether it brings sufficient clarification to the relation between design and copyright law. However, harmonisation of the conditions of copyright protection and the recent guidance of the CJEU – given the importance of both these factors for the interplay between design and copyright law – puts into question whether the margin of manoeuvre currently left to the Member States remains justified. The interaction between design law and trade mark law also appears problematic. Cumulation of trade mark and design protection can occur in cases of figurative marks and shape marks. Given this possible cumulation, some stakeholders highlighted the need to further harmonise trade mark law and design law (e.g. harmonising invalidity grounds to avoid circumvention of one right by another, alignment of the calculation of renewal dates, etc.). Recent developments and modernisation of trade mark law may also affect the relevance of design law. For instance, animated designs are more likely to be protected as a movement mark than as a design (where only seven static views can be registered). Another important question is to what extent design protection is available for interior design. The layout of a shop can be protected under trade mark law or copyright law. However, it is not clear whether this is also possible under design law, even if design law appears better suited for protecting interior design. Practice shows that it is important for the industry to have a harmonised and clear legal framework for protection of interior design (also with respect to global trade), be it for a physical shop interior or for the layout of an online shop. Finally, although less problematic, the interaction between designs, patents and utility models also raises issues, with designs being sought to protect a technical solution. This question is closely linked to the interpretation of the notion of technical function (see Section 5.2.2). Clarification brought by the case-law in that respect may facilitate the distinction that should be made between purely technical solutions and designs that, although presenting technical features, should benefit from design protection. Conclusions EU legislation on design protection set ground rules for the interaction between copyright law and design law. However, the limited harmonisation has led to some discrepancies across Member States. This has resulted in an incoherent approach across the EU, and undermined the relevance and effectiveness of the design protection system. CJEU case-law is now increasingly harmonising national copyright law across the EU, which means it no longer appears necessary to leave a margin of manoeuvre to Member States. Insufficient clarity on the interaction between both copyright law and trade mark law on the one hand and design law on the other hand reduces the coherence of the EU’s IPR legal framework. 5.2.7.Conclusions EU legislation on design protection has proven to be effective in offering relevant protection tools. It provides an appropriate range of different rights to designers (registered and unregistered rights, national or EU coverage), allowing them to choose the protection titles best suited to their needs. It thus contributes to the added value of the design protection system. Uniform definitions and protection requirements, as well as the introduction of unitary titles, also contributed to the effectiveness and added value of EU legislation on design protection. These facilitate access to design protection in the EU and its Member States. However, the legislation’s relevance is somewhat diminished by not being fully adapted to the digital age, in particular for: (i) the definition of the eligible subject-matter of protection; or (ii) limitations. The protection conferred by design rights appears to be effective, although improvements could be made to better address challenges and legal uncertainty deriving from: (i) the development of new technologies; (ii) interaction with other IPRs; and (iii) increased levels of counterfeiting. In addition, the catalogue of limitations could provide better balance between the interests of designers and design users. Finally, the coherence of the EU design acquis could be improved, as currently both internal coherence (i.e. the term of protection for different design rights and the disclosure requirements for different design rights) and external coherence (i.e. coherence in the interaction of design rights with copyright law and trade mark law) seems undermined by the existing differences.

Effectiveness Efficiency Relevance Coherence EU added value Different ways of protecting designs + + N/A + + + + + Protection requirements and scope of protection + N/A - + - + + Rights conferred + - N/A + - + - N/A Defences to infringement - N/A - - + Term of protection + + N/A N/A + - N/A Relation to other forms of IP protection + - N/A - - - N/A Overall + N/A + - - + 5.3.Procedures As explained in Section 5.2.1, the EUIPO is competent to examine applications for RCDs, and the national IP offices are responsible for carrying out examination for registered national designs. Since there has been no harmonisation of the procedures to obtain, maintain or invalidate national design rights, Member States are free to set procedural provisions. As a result, each Member State has its own processes in place. It must be noted, however, that in order to align their practices, national IP offices, in cooperation with the EUIPO under the so-called Convergence Programmes, have established certain common practices (see Annex VI). 5.3.1.Means and requirements of design representation Representation of the design is a key and obligatory element of any design application. For RCDs, the representation of a design consists in its graphic or photographic reproduction, and can be filed on paper or by electronic means. The design must be reproduced on a neutral background and cannot be retouched. For national registered designs, the representation requirements are determined by the Member States. The results from the Public Consultation show that among the aspects left untouched by the Directive, the formal requirements to represent a design were considered most in need of harmonisation . One stakeholder association noted that harmonisation of these formal requirements is important to allow applicants to use the same set of design representations at the EUIPO and in any Member State (and, as a vision in the future, at any IP office party to the Hague System). Lack of alignment of such formalities may also lead to obtaining different scope of protection for the same design in different countries. The Legal Review also reports that among the Member States reviewed, there is significant divergence in the requirements of national offices concerning representations of a design. Such divergences relate, among others, to the number of viewings, the size of the paper for paper filings, and the acceptance of computer-aided representations. These diverging formal requirements may hamper the interoperability of the design systems. They prevent applicants from claiming priority and using the same design representation across jurisdictions , increase registration costs and potentially lead to national rights of different scope for the same original design. They also make it more difficult to develop common IT tools in the EU. For instance, representing a design on a neutral background is of key importance to avoid hampering automated image searches and to meet the representation requirement of the Design Law Treaty (see Section 5.6.2). The background of a design representation should be ‘empty’ in the sense that no other objects may be shown. Maximum number of views The permitted number of views of a design that can be filed for representation purposes is limited to a maximum of seven different perspectives of the same design for an RCD. Only one copy of each view can be filed. Feedback from stakeholders suggests that this number is perceived as too limited. Different consultations indicate that this maximum of seven views causes legal uncertainty when filing internationally or in other EU Member States where much higher numbers (e.g. 10 in Germany and more than 100 in the US) or even an unlimited number of views (e.g. in most EU Member States and WIPO) are allowed. Moreover, some respondents to the Public Consultation mentioned that having such a small number of views can limit the ability of a designer to show the design fully or show particular aspects of the design fully. Respondents claimed that a greater number of views is desirable in particular for some types of designs, for instance to show details of a multi-position or motion design. Both the Legal Review and numerous respondents to the Public Consultation therefore recommended increasing the number of views allowed for an RCD application. Indeed, the existing seven-view limit in the Implementing Regulation is problematic with a view to facilitating the filing of designs and increasing both legal certainty and the efficiency of the Community design protection system. However, further reflection and analysis is needed as to whether a higher limit or an unlimited number of views should be allowed, given the current option of filing an additional dynamic representation of 3D designs. Since the Directive did not harmonise the number of views that can be filed as part of a national design application, the requirements differ across Member States, leading to a potential divergence in the scope of protection granted for the same design, and thus undermining the coherence of the system. Means of representation Currently the RCD registration procedure is constrained to static views only (there is no possibility of filing a dynamic view of a design), even for three-dimensional designs. While 3D digital representations can be filed at the EUIPO, they are only considered as an additional technical means of viewing the design, and do not replace conventional static views. CD ROMS and other data carriers are also not accepted. According to the Legal Review, introducing the possibility of filing dynamic views would make it possible to concretise the design by showing certain qualities which might not necessarily be visible in a line drawing. This is in line with the feedback received through the Public Consultation. Some respondents consider that the current graphic representations have limited capability to represent: (i) designs with different forms of appearance or assembly (modular systems, on/off, open/closed, etc.); or (ii) designs that show a set sequence or movement. Stakeholders therefore, suggest to consider introducing other means of representation, including in particular 3D digital representations and video files, to protect a wider range of designs and to protect designs more effectively. In this context, the stakeholders stress that design protection should also be available for manifestations that are not physically defined as two or three-dimensional objects (e.g. animated designs and graphical user interfaces), and that widening the notion of product to other types of designs is thus necessary (see Section 5.2.2). Against this background, the restriction to mere static graphic means of representation should be considered not effective and no longer relevant to satisfy the need for clarity on the subject-matter of protection. Broadening the means of representation could facilitate the filing of designs of different (new) types. The possibility of filing dynamic views could improve the effectiveness and efficiency of Community design protection, adapting its rules to the needs of the digital economy, as already done in the area of EU trade mark law. According to the Legal Review, at national level the practice of accepting dynamic views of designs is not widespread. Nevertheless, since most interview participants were in favour of this possibility, the Review recommends that Member States should, if feasible, offer the possibility to register dynamic views of a design. This would allow the national offices to adopt the technology when appropriate, and give the applicants a possibility of opting for a method of representing their design that provides them with the greatest scope of protection. The potential for harmonising the national rules on the representation of a design could be further explored with a view to aligning them with those of the Community design regime and facilitating access to design protection. Filing of a specimen The graphic or photographic reproduction of a design can be substituted by a specimen (physical sample) of the design if an RCD application concerns a two-dimensional design and contains a request for deferment (Article 36(1)(c) of the Regulation; Article 5(1) of the Implementing Regulation).

However, a majority (55%) of the respondents to the Public Consultation thinks that the filing of specimens is no longer relevant. It is mentioned that this option is not often used and appears obsolete in an era of online deposits. France, for instance, no longer accepts the deposit of physical specimens. The possibility to accept and store specimens of designs incurs administrative costs for IP offices. A very low number of specimens are filed with the EUIPO – only 103 (including inadmissible filings) since 2003. Visual disclaimers Neither the Community design legal regime nor the national design legal regime echo the agreed common practice on visual disclaimers established by the EUIPO in cooperation with most EU Member States as part of the Convergence programme on graphic representations (‘Common Practice’). The Community design legal regime does not contain a reference to the use of visual disclaimers, which indicate the features of the design shown in the representation that are not intended to be protected. However, this Common Practice is reflected in the EUIPO’s design guidelines. Where a disclaimer is used, broken lines are recommended. The guidelines further explain that descriptions cannot be used for this purpose, since descriptions do not affect the scope of protection of the design as such and are not published. Some respondents to the Public Consultation proposed changing the current legal regime by allowing a description as an interpretative – or even as a decisive – factor (e.g. as a verbal disclaimer) for determining the subject-matter of design protection. However, the verbal disclaimers need to be translated and are less appropriate to indicate excluded features. The Legal Review argues that the Convergence Programme between the EUIPO and national offices is a move towards a harmonised position in respect of design registrations. However, it would be better to codify the Common Practice in national laws, considering that in most Member States technical drawings; explanatory text, wording or symbols are not allowed within the representation. If this codification does not take place, the effectiveness (clarity on scope of protection) and the efficiency (need to account for different rules in different jurisdictions) of the design protection system is undermined. The potential for further harmonisation of the national rules on visual disclaimers should therefore be explored, with a view to aligning them with those of the Common Practice and thus increasing coherence and legal certainty across the EU. Conclusions The introduction of the representation requirements has largely proven to be effective for traditional design types. However, these requirements clearly need to be overhauled to: (i) facilitate registration; (ii) make it easier to better determine the scope of design protection; and (iii) account for technological advances. The current legal requirement that a Community design must be represented by graphic means with a limitation on the permitted number of perspectives to seven static views hampers the effective and efficient use of the system. It also undermines the system’s relevance, as the admissible means of representation do not account for the latest technical developments and the possibility of protecting digital designs. The lack of provisions on disclaimers also hampers the effective and efficient use of the system, and the option of substituting the representation with a specimen is no longer relevant. On a national level, there is significant divergence in the requirements for the number of views, the neutral background, and the acceptance of computer-aided representations. This incoherence between different systems leads to legal uncertainty when filing in multiple jurisdictions. It also makes it difficult to file designs of different (new) types, which does not respond to the needs of digital economy. Missing harmonisation of the design representation regime across the EU undermines the coherence and overall efficiency of the design protection system. More uniform and more digital representation requirements would make it possible for designers – and in particular SMEs and individual designers – to reduce compliance costs. 5.3.2.Different filing options When filing an RCD application the applicant can opt to: claim priority, request deferment of publication, or decide to file for a multiple application; additional requirements apply in all these cases. Similar filing options are provided for in most of the national laws. Claiming priority A priority date is used to establish the precedence of rights, and has crucial importance for assessing novelty and individual character of a design. Applicants can rely on the so-called convention priority to gain a right of priority of six months from the date of filing of the first application. Efficient use of the convention priority also depends on the uniform application of the representation requirements across the EU (Section 5.3.1). The RCD can also benefit from the so-called exhibition priority, which has the effect that the date of priority will count as of the date on which the design was displayed at an officially recognised exhibition . The request, accompanied by evidence of the display, must be filed within 6 months of the initial disclosure at an exhibition. Contrary to the design laws of several Member States, the scope of relevant exhibitions for claiming priority covered by the Regulation is essentially limited to world