COMMISSION OF THE EUROPEAN COMMUNITIES 
Brussels, 21.11.1997 
COM(97) 622 final - COD 464 
OPINION OF THE COMMISSION 
pursuant to Article 189 b (2) (d) of the EC Treaty, 
on the European Parliament's amendments 
to the Council's common position regarding the 
proposal for a 
EUROPEAN PARLIAMENT AND COUNCIL DIRECTIVE 
on the legal protection of designs 
AMENDING THE PROPOSAL OF THE COMMISSION 
pursuant to Article 189 a (2) of the EC Treaty 

1. Historical background 
• On 3 December 1993, the Commission submitted proposals for a Regulation on the 
Community design1 and for a Directive on the legal protection of designs2 ("the 
Directive"). 
• Parliament decided to discuss the proposal for the Directive first and to adopt a 
position on the proposal for a Regulation when it conducts the second reading of 
the proposal for the Directive. Following this decision, Parliament adopted its 
opinion on the Directive on 12 October 19953. 
• The Economic and Social Committee adopted a first opinion on 6 July 19944 and 
an additional opinion on 22 February 19955. 
• In response to Parliament's opinion the Commission presented an amended 
proposal for a Directive on 14 March 19966. 
• The Council adopted its common position on 17 June 19977. 
• The Commission adopted its position on the Council's common position on 19 
June 1997 and communicated it to the European Parliament8. 
• On 22 October 1997, the European Parliament voted in favor of 12 amendments to 
the common position in second reading. 
2. Objective of the Commission proposal 
The proposal for a Directive aims to ensure an effective legal protection for designs 
within the Member States of the Community. It seeks to reduce the legal obstacles 
to freedom of movement for design goods and to the establishment of a system of 
undistorted competition in the internal market. To this end, it contains a series of 
definitions and rules pertaining to the definition of "design", the requirement for 
obtaining protection including the grounds for exclusion, the requirement's 
concerning individual character and novelty, the scope and term of protection, the 
grounds for refusal or invalidity, the definition of rights conferred by the design 
including their limitations and exhaustion of rights. 
1 OJ No C 29, 31.01.1994, COM(93) 342 final. 
2 OJ No C 345, 23.12.1993, p. 14. COM(93) 344 final. 
3 OJ No C 287, 30.10.1995, p. 157. 
4 OJ No C 388, 31.12.1994, p. 9. 
5 OJ No CI 10, 02.05.1995, p. 12. 
6OJNoC142, 14.05.1996, p. 7. 
7 OJ No C 237, 04.08.1997, p. 1. 
8 SEC(97)1107final - COD 464. 
3. Opinion from the Commission to the amendments from Parliament 
The Commission should underline that on 19 June 1997, it was unable to accept the 
Council's common position, in particular because the Council left out the repair 
clause as contained in Article 14 of the Commission's amended proposal of 1996. 
For the sake of clarity, the Commission's opinion on Parliament's amendments and its 
amended proposal, as annexed to this document, are to be read in the light of the said 
Council's common position. 
Consequently, the attached amendments would modify the Council's common 
position of 17 June 1997. 
3.1 Amendments which the Commission accepted 
The Commission accepted Amendments No 2 to 4, 7 to 11, and 13 for the following 
reasons. 
re Amendment No 2 
Re Amendment No 3 The 13th recital of the common position specifies that the 
individual character of a design must be based on a "clear" 
"overall different impression", whereas the relevant provision 
in the Directive (Article 5) refers to an "overall different 
impression" only. 
Thus, the common position does not comply with 
Parliament's and the Commission's wish to lower the 
threshold for protection, as explained in the Commission's 
amended proposal of 1996. In addition, it is felt that the 
adjective "clearly" in recital n° 13 unduly introduces a 
qualification, which is not in conformity with the wording 
and objectives of Article 5. 
The Commission supports Parliament's amendment to limit 
the protection of component parts of complex products to 
those parts, which remain visible during normal use of the 
latter. The wording of Article 3(3)(a) of the common position 
is considered to be too broad, since it includes any 
component part, which can reasonably be expected to remain 
visible during normal use. 
Parliament's amendment was already incorporated in the 
Commission's amended proposal of 1996. For further 
comments, reference is therefore made to the said proposal. 
re Amendment No 4 The Commission supports Parliament's amendment to 
interpret the concept of "normal use" restrictively (Article 
3(4)). 
re Amendment No 7 
re Amendment No 9 Parliament's amendment was already incorporated in the 
Commission's amended proposal of 1996. For further 
comments, reference is therefore made to the said proposal. 
The amendment clarifies that the total term of protection for 
designs shall be 25 years from the date of filing. 
The amendment does not change the substance, but improves 
the wording of Article 13(2) of the common position. 
re Amendment No 10 The amendment re-introduces the repair clause, as redrafted 
by the Commission in its amended proposal of 1996. 
The Commission continues to believe that the clause is 
justified and reasonable. 
re Amendment No 11 The amendment provides for the free movement of 
component parts which are commercialised pursuant to the 
repair clause (amendment No 10). 
Parliament's amendment was already incorporated in the 
Commission's amended proposal of 1996. For further 
comments, reference is therefore made to the said proposal. 
re Amendment No 13 The Commission supports the revision clause (Article 18 of 
the common position), as redrafted by Parliament in its 
amendment, because it is based on the assumption that the 
repair clause is re-introduced. 
3.2 Amendments which the Commission did not accept 
The Commission did not accept Amendments No 5, 6 and 12 for the following 
reasons. 
re Amendment No 5 
re Amendment No 6 Although the amendment reflects what was in Article 6(3) of 
the Commission's amended proposal of 1996, the 
Commission agrees, after further reflection, with Article 6(3) 
of the Council's common position. 
Where a third party has, subsequent to an abusive disclosure 
of a design, obtained a registered design right, it is not 
justified that the person who is legitimately entitled to the 
design right, should be deprived of his right to claim 
proprietorship of such design. 
The Commission can not accept Amendment No 6, because it 
enlarges, without good reason, the scope of application of the 
'must fit' exception as redrafted in its amended proposal of 
1996. 
re Amendment No 12 Moreover, the wording of Amendment No 6 is relatively 
open-ended and goes therefore beyond for what is needed in 
the light of a 'must fit' clause. 
Although the Commission is sympathetic to rules, envisaging 
the combat of counterfeiting, it considers that the Design 
Directive should no longer be burdened with this type of 
procedural provisions. 
It is considered better to handle the issue of counterfeiting 
horizontally (in the near future), i.e through the inclusion of a 
set of complete measures against counterfeiting, including, 
for example all industrial property rights. 
Amended proposal for a 
European Parliament and Council Directive on the legal protection of designs 
A. 
Ccramoa position ol'ihe OOURCU -Àn*ceàîî«îïs f;v if ànUrani 
(Amendment 2) 
Recital 13 
13. Whereas the assessment as to whether a 
design has individual character should be based 
on whether the overall impression produced on 
an informed user viewing She design clearly 
differs from the existing design corpus; taking 
into consideration the nature of the product to 
which the design is applied or in which it is 
incorporated, and in particular the industrial 
sector to which it belongs and the degree of 
freedom of the designer in developing the 
design; • ' „ !3. • Whereas the- assessment as to whether 
a design has indivktaal fâmziïtë: should be based 
on whether the overall impression produced on 
an informed user viewing She ùmga differs from 
the existing - design corpus, taking into 
consideration the stature of the product to which 
the design is applied cr in which it is 
incorporated, mé in particuiar the industrial 
sector to which it belongs and the degree of 
freedom of the designer in developing the 
design; 
(Amendment 3) 
Article 3(3)(a) 
(a) if the component part, notwithstanding its 
having been incorporated into the complex 
product, could reasonably be expected to 
remain visible during normal use of the 
latter, and (a) if the component part, once it has been 
incorporated into the complex 
product, remains visible during normal 
use of the latter, and 
(Amendment 4) 
Article 3(4) 
4. "Normal use" within the meaning of 
paragraph (3}(a) shall mean any use other than 
maintenance, servicing or repair. 4. "Normal use" within the meaning of 
paragraph 3(a) shall mean use by the end user-
excluding maintenance, servicing or repair work. 
(Amendment 7) 
Article 10 
Upon registration, a design which meets the 
requirements of Article 3(2) shall be protected 
by a design right for one or more periods of five 
years from the date of filing of the application. 
The term of protection may be renewed at the 
request of the right holder for one or more 
periods of five years each, up to a total term of 
25 years from the date of filing. Upon registration, a design which meets the 
requirements of Article 3(2) shall be protected 
by a design right for one or more periods of five 
years from the date of filing of the application. 
The right holder may renew the term of 
protection for one or more periods of five years 
each, up to a total term of 25 years from the 
date of filing. 
(Amendment 9) 
Article 13(2), introduction 
2. In addition, the rights conferred by a design 
right upon registration shall not extend to: 2. In addition, the rights conferred by a design 
right upon registration may not be exercised in 
respect of: 
(Amendment 10) 
Article 14 
Transitional provision 
Until such time as amendments to this Directive 
are adopted upon proposal by the Commission 
in accordance with the provisions of Article 18, 
Member States may maintain in force or 
introduce any provisions affecting the use of a 
protected design for the purpose of permitting 
the repair of a complex product so as to restore 
its original appearance, where the product 
incorporating the design or to which the design 
is applied constitutes a component part of a 
complex product upon whose appearance the 
protected design is dependent Use of a design for repair purposes 
-L By way of derogation from Article 12. the 
rights conferred bv a design right shall not be 
exercised against third parties who use the 
design, provided that: 
(a) the product incorporating the design or to 
which the design is applied is a component 
part of a complex product upon whose 
appearance the protected design is 
dependent; and 
(b) the purpose of such a use is to permit the 
repair of the complex product so as to 
restore its original appearance, and 
9 
(c) the public is informed as to the origin of 
the product used for the repair hy thp U<K> 
of an indelible marking, such as a trade 
mark or a trade name, or in another 
appropriate form; and 
(d} the third party has: 
(i) notified the right holder of the 
intended use of the design: 
(ii) offered the right holder a fair and 
reasonable remuneration for that 
use: and 
(iii) offered to provide the right holder 
in a regular and reliable manner 
with information as to the scale of 
the use made of the design under 
this provision. 
T Save as otherwise agreed, the obligations 
mentioned in paragraph 1(d) shall be incurred by 
the manufacturer or. in the case of the import of 
a component part not manufactured in the 
Member State where the protection applies, by 
the importer of the component part into which 
the design is to be incorporated or to which it is 
to be applied. 
y In calculating the remuneration, the 
investment made in development of the relevant 
design shall be the primary basis for 
consideration. 
4. Paragraph 1 shall not apply if the right 
holder provides evidence to sustain a claim that 
the party upon whom the obligations under 
paragraph 1(d) are incumbent is unable or 
unwilling to comply with them or to pay the 
remuneration offered bv him. 
(Amendment 11 ) 
Article 15 
The rights conferred by a design right upon 
registration shall not extend to acts relating to a 
product in which a design included within the 
scope of protection of the design right is 
incorporated or to which it is applied, when the 
product has been put on the market in the 
Community by the holder of the design right or 
with his consent. The rights conferred by a design right upon 
registration shall not extend to acts relating to a 
product in which a design included within the 
scope of protection of the design right is 
incorporated or to which it is applied, when the 
product has been put on the market in the 
Community by the holder of the design right or 
with his consent or in accordance with Article 
14. 
(Amendment 13) 
Article 18 
Five years after the implementation date 
specified in Article 19, the Commission shall 
submit an analysis of the consequences of the 
provisions of this Directive for Community 
industry, for consumers, for competition and for 
the functioning of the internal market. It shall 
propose to the European Parliament and the 
Council any changes to this Directive needed to 
complete the internal market in respect of 
component parts of complex products and any 
other changes which it considers necessary. Five years after the implementation date 
specified in Article 19, the Commission shall 
submit an analysis of the consequences of the 
provisions of this Directive for competition and 
the functioning of the internal market, for the 
industrial sectors which are most affected, 
particularly manufacturers of complex products 
and component parts, and for consumers If 
necessary it shall propose to the European 
Parliament and the Council any changes to this 
Directive which prove necessary in the light of 
consultation with the parties most affected 
// 
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COM(97) 622 final 
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