Proposal for a EUROPEAN PARLIAMENT AND COUNCIL DIRECTIVE on the legal protection of designs
Date: 1993-12-03
Institutions: European Commission
Subjects: EU Member State, designs and models, industrial property, intellectual property

COMMISSION  OF  THE  EUROPEAN  COMVTUNITIES 

C0M(93)  344  final-COD  464 

Brussels,  3  December  1993 

Proposal  for a 
EUROPEAN  PARLIAMENT  AND  COUNCIL  DIRECTIVE 

on the legal  protection  of  designs 

(presented  by the  Commission) 

EXPLANATORY  MEMORANDUM 

Part One: General 

Introduction 

1.1  The  present  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. 

1.2  Apart  from  the  Benelux  where  a  regional  design  protection  system  is  in  force,  the  legal 
protection  of  designs  at  the  present  time  is  on  a  national  basis.  Therefore,  the  legal 
effect  of  protection  is  limited  to  the  territory  of  the  Member  State  in  question  or  the 
Benelux  countries. 

The  territorial  limitation  of  protection  and  the  very  different  approaches  of  the  national 
protection  systems  make  it  necessary  for  the  functioning  of  the  internal  market  that 
action  is  taken  at  a  Community  level.  For  the  reasons  explained  in  the  Explanatory 
Memorandum  for  the  Proposal  for  a  Council  Regulation  on  the  Community  Design(1), 
a Regulation  introducing  a Community  design  is  necessary. 

the  Community 

trademark.  This 

Introducing  a  Community  design  protection  system  raises  the  question  of  what  should 
become  of  the  existing  national  or  regional  protection  systems.  The  Community 
protection  system  to  be  created  by  the  Regulation  cannot  supersede  existing  national 
protection  systems  overnight.  A  period  of  at  least  temporary  co-existence  will  be 
necessary,  as occurs  in  the  approach  adopted  for  trademarks,  where  national  trademarks 
will  co-exist  with 
the 
Community  Design  enters  into  force  and  becomes  the  preferred  means  of  protection  for 
designers  and  their  successors  in  title,  national  authorities  must  still  maintain  their 
registration  systems  to  cater  for  acquired  rights.  Registrations  already  taken  out  by 
national  right  holders  must  continue  to  be  renewable  up  to  the  maximum  period  of 
protection  foreseen  by  the  legislation  of  the  country  in  question.  For  this  reason, 
national  authorities  must  be  in  a  position  to  maintain  registration  systems.  In  addition, 
even  after  the  Community  Design  has  become  the  preferred  protection  system,  it  is 
inevitable  that  some  national  enterprises  with  only  local  markets  (craftsmen,  creators 
of  works  of  applied  art, producers  of  products  adapted  to the  demands  of  local  markets) 
will  still  wish  to take out  only  national  protection. 

is  because  even  when 

Also,  it  must  be  borne  in  mind  that  switching  from  a  national  market  approach  to  a 
Community  market  approach  could  be  a  slow  process  for  some  design  right  holders 
because  they  may  need  some  time  to  become  accustomed  to  the  Community  system. 
Industry  may  also  want  to  "test"  on  its  merits  the  new  Community  instrument  for  a 
period  before  abandoning  the  familiar  national  protection  systems.  National  filings  may 

1.3 

(i) 

be  used  to  acquire  priority  rights  in  other  States  within  and  outside  the  Community, 
under the  Paris Convention  and the Hague Agreement; they  may  also be  used to acquire 
a priority  right in respect of  a registered Community  design. 

1.4  The  co-existence  of  national  and  Community  systems  presupposes,  however,  that 
national  design  protection  laws  are, at least  in  essential  respects, harmonized  to  become 
mutually  compatible  as  regards  their  most  salient  features  and also  compatible  with  the 
future  Community  protection  system.  Conflicting  provisions  would  impede  the  creation 
of  internal  market  conditions.  If,  for  example,  one  Member  State  offered  protection 
under  more  lenient  conditions  than  the  Regulation  on  the  Community  design,  and  for 
a  longer  period  of  time  and  with  broader  scope  and  contents,  producers  could  seek  to 
exploit  these  differences  by  relying  exclusively  on  (different)  national  protections, 
thereby jeopardizing the existence  of the Community  design. 

Therefore  this proposal  for  a Directive  on  the  legal  protection  of  designs  is  an  essential 
accompaniment  to the Regulation  on the Community  design. 

1.5 

In  accordance  with  the  principle  of  subsidiarity  the  approximation  need  not  extend  to 
all  aspects of  the  national  specific  protection  laws,  and it  is  sufficient  to  bring  into  line 
those  features  which  are  necessary  for  the  co-existence  of  specific  national  and 
Community  design protection.  These concern the  definition  of  "design", the requirement 
for  obtaining  protection  including  the  grounds for  exclusion,  non-prejudicial  disclosures 
as  to  the  requirements'  individual  character  and  novelty,  the  scope  and  term  of 
protection,  the  grounds  for  refusal  or  invalidity,  the  definition  of  the  rights  conferred 
by  the  design  including  their  limitations  and  exhaustion  of  rights.  There  is  no  cause  to 
interfere  in  matters  such  as  existing  national  provisions  relating  to  the  official 
procedures and to the examination  as to fulfilment  of  requirements for protection. 

2. 

The legal  basis 

The  proposed  Directive  pursues  in  respect  of  industrial  designs  and  the  goods 
embodying  industrial  designs  the  establishment  and  the  functioning  of  a  common 
market  in  design  products  and  hence  their  free  movement,  undistorted  competition  in 
design  products  and  the  due  protection  of  this  form  of  industrial  and  commercial 
property. 

There is therefore  an exclusive  competence  for the Community  to act. 

Article  100a  EEC  empowers  the  Community,  in  order  to  achieve  the  objectives  of  the 
internal  market,  to  adopt  the  necessary  approximation  measures  in  the  form  of  a 
Directive harmonizing the substantive  features of  national  design  protection  laws. 

Part Two: Commentary on the Articles 

Article 1 

This  Article  defines  "design"  and  "product"  and  is  identical  to  Article  3  of  the  proposal  for 
a  Regulation  except  mat  semiconductor  products  are  not  excluded.  This  is  because  the 
Directive^  on  the  legal  protection  of  topographies  of  semiconductor  products  does  not 
preclude  implementation  of  its provisions by  means of national  designs legislation.  Reference 
may  otherwise  be  made  to  the  commentary  on  mat  Article  in  the  Explanatory  Memorandum 
to the Regulation. 

Article 2 

This  Article  defines  the  scope  of  application  of  the  Directive.  Its  provisions  apply  only  to 
registered design rights or to applications for  such rights. 

Unregistered  design rights are not included. Most national  specific  design laws do not provide 
such a right and mere appears to be no reason to make the introduction  of unregistered design 
rights mandatory  where they do not exist. 

Article 3 

Paragraph  1  explicitly  makes  clear  that  Member  States  must  protect  designs  by  way  of 
specific  design  protection  law  and  may  not  rely  exclusively  upon  copyright  law  for  the 
protection of design. 

Paragraph  2  sets out the  requirements  for  protection:  mat  the  design  is new  and  that  it  has 
an individual  character. 

Articles 4, 5 and 6 

These  Articles  define  the  requirements'  "new"  and  "individual  character".  The  provisions 
correspond  to  Articles  4,  5,  6  and  8  concerning  registered  designs  of  the  proposal  for  a 
Regulation.  Therefore,  reference  is  made  to  the  commentary  on  these  Articles  in  the 
Explanatory Memorandum  to the Regulation. 

Articles 7 and 8 

Articles  7  and  8  set the  limits  to  what  is  protectable  under  a design  right  and  correspond  to 
Articles  9  and  10 of  the proposal  for  a Regulation. Reference  is made to  the  commentary  on 
these Articles in the Explanatory  Memorandum to the Regulation. 

(2) 

OJ No L 24, 27.1.1987, p. 36. 

Articles 9  anp! 10 

The  scope  of  protection  is  defined  in  Article  9  which  corresponds  to  Article  11  of  the 
proposal  for  a  Regulation.  Commencement  and  term  of  protection  in  Article  10  correspond 
to  those  set  out  in  Article  13  of  the  proposal  for  a  Regulation.  Reference  is  made  to  the 
comments in the Explanatory  Memorandum to the Regulation. 

Article  11 

Paragraph  (1)  and (2)  enumerate  the  cases  in  which  a  design  right  can be  declared  invalid or 
be  excluded  from  registration.  This  enumeration  corresponds  to Article  27  of  the proposal  for 
a Regulation. 

Paragraph  (3)  leaves  it  to  the  national  lawmaker  by  derogation  from  paragraphs  (1)  and  (2) 
to  determine  how  to  handle  those  design  rights  and  applications  where  the  application  for  a 
design  right  has  been  made  before  the  provisions  necessary  to  comply  with  this  Directive 
enter into force. 

Article  12 

Paragraph  (1)  defines  the  right  conferred  by  a  registered  design  right  and  is  in  conformity 
with  Article  21  of  the  proposal  for  a  Regulation.  Reference  is  therefore  made  to  the 
commentary  on mat Article  in the Explanatory  Memorandum  to the Regulation. 

Paragraph  (2)  makes  it  clear  mat  design  rights  that  have  come  into  existence  before  the  day 
the  provisions  necessary  to  comply  with  this  Directive  enter  into  force,  will  continue  to  be 
treated according to the legal  situation when the right came into existence. 

Articles  13  and 15 

Article  13  contains  a  number  of  limitations  of  the  rights  conferred  by  the  registered  design 
right.  Article  IS  deals  with  the  exhaustion  of  rights.  They  correspond  to  Articles  22  and  24 
of  the  proposal  for  a  Regulation.  Reference  is  therefore  made  to  the  commentary  on  these 
Articles in the Explanatory  Memorandum to the Regulation. 

This  provision  is  necessary  to  make  national  design  rights  compatible  with  the  Community 
Design.  Reference  is made to the commentary  on  Article  23  of the Proposal for a Regulation. 

Article  14 

Article  16 

In some  cases  a third party  may have  an interest  in obtaining  an invalidity  decision  even  after 
the  design  right  has  expired  or  has  been  surrendered,  for  example  if  the  design  has  been 
enforced  against  him  and  information  obtained  later  proves  that  the  design  right  was  invalid 
from the outset.  The provision  corresponds to Article  26(2) of the proposal  for  a Regulation. 

Articles  17 and 18 

The  protection  of  the  appearance  of  a  product  very  often  results  not  only  from  the  specific 
design  laws  in  the  Member  States,  but  from  the  concurrent  application  of  a  number  of  legal 
instruments,  even  though  the  measure  of  protection  conferred  by  each  of  them  and  the 
frequency  with  which  users resort  to  each  of  them  vary  considerably  from  one  Member  State 
to another. 

The  main  alternative  legal  instrument  traditionally  used  is  protection  under national  copyright 
law  which  is  dealt  with  in  Article  18.  But  protection  might  be  granted  as  well  under 
trademark, patent and utility  model  and unfair  competition  laws. 

One  Member  State  has  introduced  the  protection  of  unregistered  design  rights,  which  to  a 
certain extent  could be claimed to replace copyright protection  in that State. 

Therefore  it  is  necessary  to  set  out  in  the  Directive  that  the  application  of  other  national  law 
is left  untouched. 

Article  18 

Article  18  sets  out  in  accordance  with  the  provisions  of  Article  100  of  the  proposal  for  a 
Regulation  that the  cumulative  application  of  copyright  law  and specific  design  protection  law 
is  mandatory.  This implies that national  legislation  needs to be  amended  where  it foresees that 
copyright  protection  cannot or  can  only  under certain  conditions be  cumulated  with  protection 
under specific  design protection  law. 

The  conditions  of  application  of  copyright  protection  and  in  particular  the  question  relating 
to  the  level  of  originality  required  for  the  application  of  copyright  protection  is,  however, 
pending  a possible  future harmonization  of  the originality  requirement  left  to national  law. 

Provisions  of  national  law  setting  out  specific  conditions  for  the  application  of  copyright 
protection  such  as,  for  example,  the  condition  relating  to  "scindibilità"  in  Italian  law  could 
more  easily  be  removed,  and  such  removal  is  therefore  suggested  by  the  provisions  of 
Article  18. 

To  avoid  in  certain  cases  a violation  of  the  principle  of  non-discrimination  on  the  grounds  of 
nationality  enshrined  in  Article  7  EEC  it  is  necessary  not  only  to  foresee  that  the  principle 
of  "cumulation"  of  specific  design  protection  and  copyright  protection  is  applied  by  all 
Member  States, but  also to  foresee  that the  derogation  from  the principle  of  national  treatment 
authorized by  virtue of  Article  2(7)  of  the Berne  Convention  for the Protection  of  Literary and 
Artistic  Works  is  not  applied  as  regards  nationals  of  Community  Member  States.  The 
provision of  Article  18(2) sets out this important principle. 

Proposal for a 
EUROPEAN  PARI^AMENT AND COUNCIL DIRECTIVE 

on the legal protection of designs 

THE EUROPEAN PARLIAMENT  AND THE COUNCIL OF THE EUROPEAN UNION, 

Having  regard  to  the  Treaty  establishing  the  European  Community  and  in  particular  Article 
100a thereof, 

Having regard to the proposal  by the Commission(1), 

Having regard to the opinion of the Economic and Social Committee(2), 

(1)  Whereas  the  objectives  of  the  Community  as  laid  down  in  the  Treaty  include 
establishing  an  ever  closer  union  among  the  peoples  of  Europe,  fostering  closer 
relations  between  the  States  belonging  to  the  Community,  and  ensuring  the  economic 
and  social  progress  of  the  Community  countries  by  common  action  to  eliminate  the 
barriers  which  divide  Europe;  whereas  to  that  end  the  Treaty  provides  for  the 
establishment  of  an  internal  market  and  includes  the  abolition  of  obstacles  to  the  free 
movement  of  goods  and  the  institution  of  a  system  ensuring  that  competition  in  the 
common  market  is not  distorted;  whereas an approximation  of  the  laws of  the  Member 
States on the legal protection  of  designs would further  those objectives; 

(2)  whereas designs are not at present protected in all Member  States by  specific  legislation 

and such protection, where it exists, has different  attributes; 

(3)  whereas  such  differences  in  the  legal  protection  of  designs  offered  by  the  legislations 
of  the  Member  States  have  direct  and  negative  effects  on  the  establishment  and 
functioning  of  the  internal  market  as  regards  goods  embodying  designs  and  whereas 
such differences  will distort competition within the internal market; 

(4)  whereas  it  is  therefore  necessary  for  the  proper  functioning  of  the  internal  market  to 
provide  for  specific  design  protection  law in all Member  States and to approximate  the 
design protection laws of the Member States; 

(5)  whereas  in  doing  so  it  is  important  to  take  into  consideration  the  solutions  and  the 
advantages  with  which  the  Community  Design  system  will  provide  undertakings 
wishing to acquire design rights; 

(6)  whereas  it  is  unnecessary  to  undertake  a full-scale  approximation  of  the design laws of 
the Member  States, and it will  be sufficient  if approximation  is limited to those national 
provisions  of  law  which  most  directly  affect  the  functioning  of  the  internal  market; 

0) 
OJNo 
(2)  OJNo 

whereas  the  objectives  of  this  limited approximation  cannot  be  sufficiently  achieved by 
the Member States acting alone; 

(7)  whereas  Member  States  should  accordingly  remain  free  to  fix  the  procedural  provisions 
concerning  registration  and  invalidation  of  design  rights  and  provisions  concerning  the 
effects  of  such  invalidity; 

(8)  whereas  this  Directive  does  not  exclude  the  application  to  designs  of  the  legislation  of 
the  Member  States  other  than  that  relating  to  the  specific  protection  acquired  by 
registration,  such  as  the  legislation  relating  to  unregistered  design  rights,  trademarks, 
patents and utility  models,  unfair competition  or civil  liability; 

(9)  whereas  the  attainment  of  the  objectives  of  the  internal  market  in  the  field  of  designs 
may  only  be  fully  realized  following  further  harmonization  of  the  relevant  provisions 
of  the  copyright  laws  of  Member  States,  in  particular  those  relating  to  the  criterion  of 
originality;  whereas,  pending  such  further  harmonization,  it  is  important  to  establish the 
principle of  cumulation  of  protection  under specific  registered  design protection  law and 
under  copyright  law,  whilst  leaving  Member  States  free  to  establish  the  extent  of 
copyright  protection  and  the  conditions  under  which  such  protection  is  conferred; 
whereas  it  is,  however,  necessary  to  abolish  in  the  relationship  between  Member  States 
the  requirement  that  protection  under  copyright  law  shall  be  afforded  only  subject  to 
reciprocity  in  the  country  of  origin  of  the  design,  as  such  a  requirement  would  run 
contrary  to the principle of  non-discrimination; 

(10)  whereas  the  attainment  of  the  objectives  of  the  internal  market  require  that  the 
conditions  for  obtaining  a  registered  design  right  be  not  only  identical  in  all  the 
Member  States  but  also 
identical  to  those  required  for  obtaining  a  registered 
Community  design;  whereas  to  that  end  it  is  necessary  to  give  a  unitary  definition  of 
the notion of  design  and of  the requirements  as to novelty  and individual  character with 
which  registered design  rights must comply; 

(11)  whereas  semiconductor  products  should  not  be  excluded  as  products  whose  appearance 
could  form  the  subject  of  a  design  right,  since  Member  States  may  choose  design 
legislation  to implement the provisions of  Council  Directive  87/54/EEC of  16 December 
1986 on the legal  protection of  topographies of  semiconductor products(,). 

(12)  whereas  it  is  essential,  in order to  facilitate  the free  movement  of  goods,  to  ensure that 
registered  design  rights  confer  upon  the  right  holder  the  same  protection  in  all  Member 
States  and  that  this  protection  is  identical  to  the  protection  afforded  by  the  registered 
Community  design; 

(13)  whereas,  in  conformity  with  the  applicable  provisions  on  the  Community  design,  the 
interoperability  of  products of  different  makes  should  not  be  hindered  by  extending  the 
protection to the design of  mechanical  fittings; 

(14)  whereas  the  mechanical  fittings  of  modular  products  may  nevertheless  constitute  an 
important  element  of  hie  innovative  characteristics  of  modular  products  and  present  a 
major marketing asset and therefore  should be eligible  for protection; 

O) 

OJ No  L24,  27.1.1987, p. 36. 

(15)  whereas  it  is  fundamental  for  the  functioning  of  the  internal  market  to  unify  the  term 
of  protection  afforded  by  registered  design  rights  in  conformity  with  the  solution 
adopted  for  the  registered  Community  design; 

(16)  whereas  the  legal  protection  of  design  might  in  certain  circumstances  allow  the  creation 
of  monopolies  in  generic  products  and  captive  markets  by 
improperly  binding 
consumers  to  a  specific  make  of  product,  and  thus  the  introduction  of  a  provision  is 
necessary  in  order  to  make  the  reproduction  of  designs  applied  to  parts  of  complex 
products possible  for  repair  purposes  under  very  specific  conditions; 

(17)  whereas  the  provisions  of  this  Directive  are  without  prejudice  to  the  application  of  the 

competition  rules under  Articles  85 and  86 of the  Treaty; 

(18)  whereas  the  grounds  for  refusal  of  registration  in  those  Member  States  which  provide 
for  substantive  examination  of  applications  prior  to  registration,  and  the  grounds  for  the 
invalidation  of  registered  design  rights  in  all  the  Member  States,  must  be  exhaustively 
enumerated, 

HAVE ADOPTED THIS DIRECTIVE: 

For the purpose  of  this  Directive: 

Article 1 

(a) 

(b) 

"design"  means  the  appoarance  of  the  whole  or  a  part  of  a  product  resulting  from  the 
specific  features  of  the  lines,  contours,  colours,  shape  and/or  materials  of  the  product 
itself  and/or  its  ornamentation; 

"product"  means  any  industrial  or  handicraft  item,  including  parts  intended  to  be 
assembled  into  a  complex  item,  sets  or  compositions  of  items,  packaging,  get-ups, 
graphic  symbols  and  typographic  typefaces,  but excluding  a computer  program. 

This Directive  shall  apply to: 

Article  2 

(a) 

design  rights  registered  with  the  central  industrial  property  offices  of  the  Member 
States; 

(b) 

design  rights  registered  at the Benelux  Design  Office; 

(c) 

design  rights registered  under  international  arrangements  which  have  effect  in  a  Member 
State; 

(d) 

applications  for  design  rights  referred  to  under  (a) to (c). 

/ 

Article  3 

(1)  Member  States shall  protect the  designs  upon registration, by  conferring  exclusive  rights 

upon mem in accordance with the provisions of the Directive. 

(2)  A  design  shall  be  protected  by  a  design  right  to  the  extent  that  it  is  new  and  has  an 

individual  character. 

(3)  A  design  of  a  product  which  constitutes  a  part  of  a  complex  item  shall  only  be 
considered to  be new  and to  have  an individual  character in  so far as the design  applied 
to the part as such fulfils  the requirement  as to novelty  and individual  character. 

Article  4 

(1)  A  design  shall  be considered  new  if  no  identical  design  has  been  made  available  to  the 
public  before  the  date  of  filing  the  application  for  registration,  or  if  a  priority  is 
claimed,  the  date  of  priority,  designs  shall  be  deemed  to  be  identical  if  their  specific 
features  differ  only  in immaterial  details. 

(2)  A  design  shall  be  deemed  to  have  been  made  available  to  the  public  if  it  has  been 
published  following  registration  or  otherwise,  exhibited,  used  in  trade  or  otherwise 
disclosed.  It  shall  not,  however,  be  deemed  to  have  been  made  available  to  the  public 
for  the sole  reason that it has  been  disclosed  to  a third person  under explicit  or  implicit 
conditions of  confidentiality. 

Article 5 

(1)  A  design  shall  be  considered  to  have  an  individual  character  if  the  overall  impression 
it  produces  on  the  informed  user  differs  significantly  from  the  overall  impression 
produced on such  a user by  any  design  referred to in paragraph (2). 

(2)  To be considered for the purpose of  application  of paragraph (1) a design must be: 

(a) 

commercialized  in  the  market  place,  whether  in  the  Community  or  elsewhere,  at 
the  date of  the  filing  of  the  application  for  registration  or, if  a priority  is  claimed, 
at the  date of priority; or 

(b)  published  following  registration  as  a  registered  Community  design  or  a  design 
right of  the Member  State  in  question,  the  protection  of  which  has  not  expired  at 
die  date  of  filing  the  application  or  registration  or,  if  a priority  is  claimed,  at the 
date of priority. 

(3) 

In  order  to  assess  individual  character,  common  features  shall  as  a  matter  of  principle 
be  given  more  weight  than  differences  and  the  degree  of  freedom  of  the  designer  in 
developing  the design  shall  be taken into  consideration. 

10 

Article 6 

(1) 

If  a design  for  which protection  is  claimed  under  a registered  design  right of  a Member 
State  has  been  made  available  to  the  public  by  the  designer  or his  successor  in  title  or 
by  a third person  as  a result  of  information  provided  or  action taken by  the  designer or 
his  successor  in  title  or  as  a consequence  of  an  abuse  in  relation  to the  designer  or  his 
successor  in  title  during  the  twelve-month  period preceding the  date of tine filing of  the 
application  or,  if  a  priority  is  claimed,  the  date  of  priority,  such  a  disclosure  shall  not 
be taken into consideration  for the purpose of  applying Articles 4  and 5. 

(2)  The  provisions  of  paragraph  (1)  shall  not  apply  if  the  subject  of  the  abusive  disclosure 
is  a  design  which  has resulted  in  a registered  Community  design  or  a registered  design 
right of the Member  State concerned. 

Article  7 

(1)  A  design  right  shall  not  subsist  in  a  design  to  the  extent  that  the  realization  of  a 

technical  function  leaves no freedom  as regards arbitrary  features of appearance. 

(2)  A  design  right  shall  not  subsist  in  a  design  to  the  extent  that  it  must  necessarily  be 
reproduced in its exact form  and dimensions  in  order to permit the product  in which the 
design  is  incorporated  or  to  which  it  is  applied  to  be  mechanically  assembled  or 
connected with another product. 

(3)  Notwithstanding  paragraph  (2),  a  design  right  shall  under  the  conditions  set  out  in 
Articles  4  and  5  subsist  in  a  design  serving  the  purpose  of  allowing  simultaneous  and 
infinite  or  multiple  assembly  or  connection  of  identical  or  mutually  interchangeable 
products within  a modular system. 

A  design right shall  not subsist in  a design the  exploitation  or publication of which  is contrary 
to public policy  or to the accepted principles of  morality. 

Article  8 

Article  9 

(1)  The  scope  of  the  protection  conferred  by  a  design right shall  include  any  design  which 

produces on the informed  user a significantly  similar overall  impression. 

(2) 

In  order  to  assess  the  scope  of  protection,  common  features  shall  as  a  matter  of 
principle  be  given  more  weight  than  differences  and  the  degree  of  freedom  of  the 
designer in  developing his  design  shall be taken into  consideration. 

11 

Article  10 

Upon  registration a design  which  meets the requirements  under Article  3(2)  shall  be  protected 
by  a design  right  for  a period  of  five  years  from  the  date  of  filing  the  application.  The term 
of  protection  may  be  renewed  for  periods  of  five  years  each,  up to  a  total  term  of  25  years 
from the date of  filing. 

Article  11 

(1)  A  design  is  excluded  from  registration,  or  if  registered  may  be  declared  invalid,  only 

in the following  cases: 

(a) 

if the design  does not fulfil  the requirements  under Article  3(2), or 

(b)  where  its  specific  technical  and/or  interconnecting  features  are  not  eligible  for 

protection  under Article  7(1) or (2), or 

(c) 

to  the  extent  that  its  exploitation  or  publication  is  contrary  to  public  policy  or  to 
accepted principles or morality, or 

(d) 

if  die  applicant  for  or  the holder  of  the  design right is  not  entitled  to  it  under the 
law of  the Member  State concerned. 

(2)  A  design  right  may  also  be  declared  invalid  if  a  conflicting  design  which  has  been 
made  available  to  the  public  after  the  date  of  die  filing  of  the  application  or,  if  a 
priority  is  claimed,  the  date  of  priority,  is  protected  from  a  date  prior  to  the  said  date 
by  a registered  Community  design  or a design right of  the  Member  State  concerned, or 
by  an application for  such  a  right. 

($)  Any  Member  State  may  provide  that,  by  way  of  derogation  from  die  preceding 
paragraphs,  the  grounds  for  refusal  of  registration  or  for  invalidation  in  force  in  that 
State  prior to  the  date  on  which  the  provisions  necessary  to  comply  with  mis  Directive 
enter into  force,  shall  apply  to  design  rights  for  which  application  has  been  made  prior 
to mat date. 

Article  12 

(1)  Upon  registration  a design right shall  confer  on  its holder  the  exclusive right to  use the 
design  and  to  prevent  any  third  party  not  having  his  consent  from  using  a  design 
included  within  the  scope  of  protection  of  the  design  right.  Hie  aforementioned  use 
shall  cover,  in  particular,  the  making,  offering,  putting  on  the  market  or  using  of  a 
product  in  which  such  a  design  is  incorporated  or  to  which  it  is  applied,  or  from 
importing,  exporting or stocking  such a product for those purposes. 

(2)  Where, under the law of  a Member  State,  acts referred  to in paragraph  (1)  could not be 
prohibited  before  the  date  on  which  the  provisions  necessary  to  comply  with  this 
Directive  entered  into  force,  the  rights  conferred  by  the  design  right  may  not  be  relied 
on to prevent continuation  of  such acts. 

12 

(1)  The rights conferred  by  a design  right upon registration  shall not extend to: 

Article  13 

(a) 

acts done privately  and for non-commercial  purposes; 

(b)  acts done for experimental  purposes; 

(c) 

acts  of  reproduction  for  the  purposes  of  making  citations  or of  teaching,  provided 
that  such  acts  are  compatible  with  fair trade  practice  and  do not  unduly  prejudice 
the normal  exploitation  of the design,  and that mention  is made of die source. 

(2) 

In addition, the rights conferred by  a design right upon registration  shall not extend to: 

(a) 

the  equipment  on  ships  and  aircraft  registered  in  another  country  when  these 
temporarily  enter the territory  of  the Member State concerned; 

(b) 

the  importation  in  the  Member  State  concerned  of  spare parts  and  accessories  for 
the purpose of  repairing  such  craft; 

(c) 

the execution  of  repairs on such  craft. 

Article  14 

The rights conferred  by  a  design  right  shall  not  be  exercised  against  third  parties  who,  after 
three  years  from  the  first  putting  on  the  market  of  a  product  incorporating  the  design  or  to 
which the  design is applied, use the  design  under Article  12, provided that: 

(a) 

(b) 

the  product  incorporating  the  design  or  to  which  the  design  is  applied  is  a  part  of  a 
complex  product upon whose  appearance the protected design  is dependent; 

the purpose  of  such  a use  is to permit  the repair of  the  complex product  so  as to  restore 
its original  appearance; and 

(c) 

the public is not misled  as to the origin of the product used for the repair. 

Article  IS 

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  die  design  right  is 
incorporated  or  to  which  it  is  applied,  when  the  product  has  been  put  on  die  market  in  the 
Community  by the holder of  the design right or with his consent. 

A  design  right may be declared invalid  even  after it has lapsed or has been surrendered. 

Article  16 

13 

Article  17 

The  provisions  of  this  Directive  shall  be  without  prejudice  to  any  legal  provisions  of  the 
Community  or  of  the  Member  State  concerned  relating  to  unregistered  design  rights, 
trademarks  or  other  distinctive  signs,  patents  and  utility  models,  typefaces,  civil  liability,  or 
unfair  competition. 

Article  18 

(1)  Pending  further  harmonization  of  the  laws  of  copyright  of  the Member  States,  a design 
protected  by  a design right registered  in  or  for  a Member  State  in  accordance  with  this 
Directive  shall  also  be  eligible  for  protection  under  the  law  of  copyright  of  that  State 
as  from  the  date  on  which  the  design  was  created or  fixed  in  any  form,  irrespective  of 
the number of  products in  which  such  design  is  intended to be incorporated or to  which 
it  is  intended  to  be  applied  and  irrespective  of  whether  the  design  can  be  dissociated 
from  the  products  in  which  it  is  intended  to  be  incorporated or to  which  it  is  intended 
to  be  applied.  The  extent  to  which,  and  the  conditions  under  which,  such  a  protection 
is  conferred,  including  the  level  of  originality  required,  shall  be  determined  by  each 
Member State. 

(2)  Pending  further  harmonization  of  the  laws  of  copyright  of  the  Member  States,  each 
Member  State shall  admit to the protection under its law of  copyright  a design protected 
by  a  design  right  registered  in  or  for  this  State  which  fulfils  the  conditions  required 
under  such  law,  even  if,  in  another Member  State which  is  the country  of  origin  of  the 
design, the latter does  not fulfil  the conditions for protection  under the law of  copyright 
in that State. 

Article  19 

(1)  Member  States  shall  bring  into  force  the  laws,  regulations  or  administrative  provisions 

necessary  to  comply  with this Directive by  31  October  1996. 

When  Member  States  adopt  these  measures,  these  shall  contain  a  reference  to  the 
Directive  or  shall  be  accompanied  by  such  reference  at  die  time  of  their  official 
publication.  The procedure for  such reference  shall be  adopted by Member States. 

(2)  Member  States  shall  communicate  to  the  Commission  the  provisions  of  national  law 

which they  adopt in the  field  governed by this Directive. 

This Directive  is addressed to the Member States. 

Article  20 

Done  at Brussels, 

For the European Parliament 
The President 

For the Council 
The President 

14 

FINANCIAL STATEMENT 

Tide 

Proposal for  a European Parliament and Council Directive on the legal protection of designs. 

Description of the measure 

Its purpose is to harmonize national  design protection  laws in certain  respects with  provisions 
of the proposed Council Regulation on the Community Design. 

It has no financial implications for the budget of the Community. 

15 

THE IMPACT OF THE PROPOSAL ON BUSINESS 
(with special reference  to SMEs) 

1.  Why is Community legislation necessary? 

To  harmonize  in  certain  respects  the  relevant  laws  of  the  Member  States  with  the 
Community  Design  system  proposed  in  the  draft  Regulation  for  the  legal  protection  of 
designs. 

2.  Which business will  be affected? 

(a)  Manufacturing  businesses  whose  products  have  an  appearance  which  embodies 
commercially  valuable  design  features  will  be  affected.  For  those  preferring  to 
continue  to  seek  design  protection  under  existing  national  laws, the  latter  will  be 
made more consistent with the new Community  system. 

(b) 

All  sizes  of  business  would  have  an  interest,  but  the  national  route  may  be 
preferred  by  those  not  seeking  Community-wide  protection  and  may  therefore 
appeal more to some SMEs man to multinationals. 

(c) 

There is no reason to suppose that particular  geographical  areas will predominate. 

3.  What will businesses have to do to comply with the proposal? 

No  specific  action  will  be  needed.  Businesses  in  some Member  States  may  find  that  the 
criteria  which  a  design  must  meet  for  national  protection  to  be  given  will  change  in 
certain  respects  as  a  result  of  harmonization.  Businesses  will  continue  to  benefit  from 
cumulative protection  for  designs under the relevant  copyright law in each Member State. 

On  the  other  hand,  it  has  been  argued  by  several  organizations  representing  small  and 
medium-sized  producers  of  automobile  spare  parts  that,  in  contrast  to  the  Commission's 
intentions, the interpretation  which national offices  and the courts may give to the criteria 
for  individual  character  and  novelty  could  lead  to  a  lower  protection  threshold  than 
envisaged.  If  this happened  it  could  mean,  it is  claimed, that  a large number of  products 
of largely  functional  design with little or no aesthetic character and largely  predetermined 
outward  shape might fall  into the scope of protection. 

16 

4.  What economic effects  is the proposal likely to have? 

(a) 

on employment? 

Harmonized  Community  design  laws  should  stimulate  the  activities of  designers  both  to 
innovate  and  to  market  more  widely,  with  a  positive  impact  on  employment  especially 
in smaller enterprises. 

These  rights  must  be  observed  by  third  parties»  such  as  competing  manufacturers,  and 
those  who  trade  in  the  design-protected  products  of  others.  However,  the  proposal 
contains  measures  which  aim  to  avoid  any  unduly  onerous  effects  on  SMEs  trading  in 
replacement parts of complex products such as motor cars. 

(b) 

on investment  and the creation of new businesses? 

Harmonized  Community  protection  for  designs  should  give  businesses  greater 
confidence  in  being  able  to  recover  their  costs  and  will  thereby  encourage  investment. 
It  is  difficult  to  judge  exactly  the  impact  for  large  manufacturing  businesses  where 
design may only  represent one aspect of  a product but industry  has clearly  indicated the 
importance it attaches  to Community  design  protection.  On the other hand,  there should 
be  an  encouragement  for  creation  of  smaller  businesses  where  the  emphasis  may  lie in 
the  design  of  a product.  As  regards  enterprises  who  trade  in  design-protected  products, 
there  are provisions  which  limit to  a certain  extent the exercise  of  design rights against 
those  whose business is in the replacement  parts  market,  such  as for  example  suppliers, 
repairers  and  insurers  in  the  motorcar  aftermarket.  While  providing  protection  to 
promote  creation,  therefore,  the  provisions  permit  a  measure  of  competition  from 
independent producers. 

(c) 

on the competitive position of businesses? 

It is in the nature of protectable  designs that they  do not exhaust the fields of  opportunity 
for  other  designers  in  a  given  product  area,  and  the  enhanced  competitiveness  which 
results  from  this  freedom  should  benefit  all  sizes of  design-creating  enterprises,  without 
posing  a  severe  threat  even  to  very  small  ones.  Moreover,  Competition  will  be 
encouraged  in  areas  where  designs  will  be  made  ineligible  for  protection  -  for  example 
because  fulfilment  of  a  technical  function  leaves  no  design  freedom,  or  because  the 
design is constrained by the need to interconnect with another product. 

17 

5.  Does  the proposal  contain measures to take account of  the specific  situation of  SMEs? 

The  measures  contained  in  the  proposal  are  not  directed  specifically  at  small  and  medium-
sized  enterprises,  but  these  may  benefit  proportionately  more  than  large  firms,  because  the 
greater  simplicity  and  lower  costs  of  harmonized  Community  design  protection  should  be  of 
greater  significance  in  SMEs.  It  is  in  some  of  the  smaller  SMEs  that  many  of  today's  most 
innovative  and  original  designers  may  tend  to  concentrate. 

The  proposal  will  harmonize  exclusive  rights  for  designers  and  their  successors  in  title,  and 
these  rights  must  be  respected  by  competitors.  As  for  SMEs  trading  in  the  design-protected 
products  of  others,  it  is  not  appropriate  that  industrial  property  law  should  itself  contain 
exemptions  for  specific  industrial  sectors.  However,  for  the  reasons  given  above,  traders  in 
and  manufacturers  of  replacement  parts  are  given  certain  relief  from  the  exercise  against  them 
of  such  rights  as  may  exist  in these parts. 

6.  Consultation 

The  Commission  services  published  a green  paper  "The Legal  Protection  of  Industrial  Design" 
(III/F/5131/91).  This  was  widely  circulated  to  thousands  of  recipients.  On  the  basis  of  a 
considerable  number  of  submissions  from  major  industrial  organizations  received,  interested 
parties  were  invited  to  a  hearing  in  Brussels  on  25  and  26  February  1992.  Reactions  have 
been  generally  very  favourable,  and  although  many  detailed  aspects  will  need  discussion  there 
are  only  a  few  issues  of  difficulty  to  be  resolved,  mainly  concerned  with  the  criteria  for 
protectability  and  what  kinds of  design  should  not  be  eligible  for  protection 

Some  have  expressed  concerns  that  manufacture  of  certain  functional  products  may  be 
monopolized  by  the  existence  of  design  rights,  these  allegations  being  based  upon  the  absence 
of  a  distinction  between  aesthetic  and  functional  design.  However,  experience  shows  that  this 
distinction  is  largely  arbitrary  and  that  protection  for  functional  designs  needs  in  any  case  to 
be  provided  for  by  some  means.  The  design  Directive  makes  protection  dependent  upon 
distinctive  appearance,  and  in  view  of  this, these  concerns  should  not  prove  to  be justified 

Some  industries have  expressed  the view  that the  market  for  replacement  parts  would  benefit 
if  protection  were  denied  for  any  design  constrained  wholly  by  the  need  for  the  product 
embodying  it  to  interconnect  mechanically  with  another  product,  and  the  proposal  contains 
appropriate  provisions  to  this  end.  These  concerns  have  arisen  notably  in  the  motor  and 
computer  industries,  with  independent  producers  of  replacement  parts  arguing  against  the 
perceived  monopoly  position  of  the  original  manufacturers.  ACEA(I),  representing  the original 
motor manufacturers, argue strongly  that they  deserve and require design protection  for certain 
component  parts  of  motor  cars  in  order  to  be  able  tb  recover  their  design  costs,  and  they 
consider  therefore  that they  have  made  sufficient  concession  in  accepting  these  provisions on 
the  non-protectability  of  a  product  design  dictated  wholly  by  the  way  it  has  to  fit 
mechanically  with  another  product.  On  the  other  hand,  EAPA 2),  CLEDIPA(,),  AIRCf4)  and 
CLEPA(5)  representing  the  component  and  replacement  part  manufacturers,  continue  to  argue 
strongly  not  only  against  protection  for  those  designs  which  must  mechanically  fit,  but  also 
against  protection  for  other  designs  which  must  visually  match,  the  remaining  parts  of  a 
complex  product  such  as  a  car.  They  have  variously  suggested  solutions  such  as  a  "must-
match"  exception  from  protection,  or  a  legal  licence  provision,  declaring  that  they  are  not 
opposed  to paying  royalties, but objecting  to being prohibited  from  manufacturing  and dealing 
in  spare parts.  Representatives  of  the  insurance  industry  and consumers  also  argue that design 
protection of  such  parts will  raise the costs of  repair  work  and of  insurance premiums. 

(,)  ACEA: Association  des Constructeurs Européens d'Automobiles. 
(2)  EAPA: European  Automotive  Panel  Association. 
(3)  CLEDIPA:  Comité  de  Liaison  Européen  de  la  Distribution  Indépendante  de  Pièces  de 

rechange et Equipements pour Automobiles. 

(4)  AIRC:  Association  Internationale  des Réparateurs en Carrosserie. 
(5)  CLEPA:  Comité  de  Liaison  de 

la  Construction  d'Equipements  et  de  Pièces 

d'Automobiles. 

19 

ISSN 0254-1475 

COM (93) 344 final 

DOCUMENTS 

EN 

os 06 

Catalogue number : CB-CO-93-410-EN-C 

ISBN 92-77-58339-8 

Office for Official Publications of the European Communities 

Lr2985 Luxembourg 

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