Amended proposal for a EUROPEAN PARLIAMENT AND COUNCIL DIRECTIVE on the legal protection of designs
Date: 1996-02-21
Institutions: European Commission
Subjects: competition policy, designs and models, industrial counterfeiting, industrial property

COMMISSION OF THE EUROPEAN COMMUNITIES 

Brussels, 21.02.1996 
COM(96) 66 final  - COD 464 

Amended proposal  for a 
EUROPEAN PARLIAMENT AND COUNCIL DIRECTIVE 

on the legal  protection of designs 

(presented by the Commission  pursuant to Article  189a(2) 
of the EC Treaty) 

EXPLANATORY  MEMORANDUM 

GENERAL  PRESENTATION 

In  January  1994,  the  Commission  submitted  to  the  Council  and  the  European  Parliament 
proposals  ("the  Proposals")  for  a  Regulation  on  the  Community  design(1) ("the  Regulation") 
and  for  a Directive  on the legal  protection  of  designs(2) ("the  Directive"). 

The  Economic  and  Social  Committee  adopted  a  first  opinion  on  6  July  1994(3)  and  an 
additional  opinion  on  22 February,  1995(4). 

The European Parliament decided to discuss the proposal for the Directive first  and to conduct 
the second reading when it adopts a position  on the proposal  for a Regulation.  Following this 
decision,  Parliament  adopted  its  opinion  on  the  Directive  during  its  plenary  session 
of  9-  13 October  1995(5). 

In  its  opinion,  Parliament  followed  the  opinion  of industries  in  endorsing  the  Commission's 
initiative.  This positive  opinion  is, however,  subject  to  13 amendments. 

Parliament  concentrated  mainly  on  the  definition  of  design,  the requirements  for  protection, 
the exclusion from  protection of certain elements to promote interoperability  of products and, 
in particular,  on reproduction for repair purposes. The solutions chosen to resolve these issues 
are also of major  importance for the future  Regulation,  where most material  provisions must 
of  course be  identical  to those  found  in  the  Directive. 

The purpose of this amended proposal  is to take account  of these amendments  and to  clarify, 
where  necessary,  the  wording  of  a  number  of  provisions. 

The  Commission  was  able  to  adopt  all  amendments  proposed  by  the  European  Parliament 
except  one, which  concerned  the introduction  of the idea of a legal  assumption  of novelty  in 
infringement  cases before  national  Courts.  In  concrete  terms, the  amendment  stated  that,  in 
such  cases,  the  burden  of  proof  on  the  existence  of  a  previous  and  identical  design  should 
always be  assigned  to the infringer.  Such  a provision  is not  appropriate  in  the context  of the 
Directive,  because  the  latter  concerns  national  registration  procedures,  and  because 
Member  States  are  left  free  to  decide  whether  they  wish  to  let  examining  Offices  establish 
the  novelty  of  a  design  prior  to  registration  or  not.  Where  Member  States  do  have  an 
examining Office,  such a provision would be superfluous  at best, because novelty would  have 
been  established  ex  officio.  Furthermore,  and  irrespective  of  the  existence  of  such  Offices, 
the  provision  would  make  unwarranted  inroads  on  Member  State  rules  on  court  procedure. 
Both  reasons  render  the  provision  undesirable  in  the  context  of  the  Directive. 

(1)  OJ No  C 29,  31.1.1994,  COM(93)  342 final. 
(2)  OJ  No  C  345, 23.12.1993,  COM(93)  344 final. 
(3)  OJ  NoC  388, 31.12.1994. 
(4)  O J N oC  110, 2.5.1995. 
(i)  Not  yet  published. 

As  regards  one  other  amendment,  namely  that  relating  to  the  requirement  of  individual 
character  (Article  5, paragraph  1), the Commission  has only with  some reluctance been  able 
to  follow  Parliament,  because  the  amendment  reduces  the  "threshold"  for  protection. 
Moreover,  the amendment  also has some bearing  on the  second paragraph  of  Article  5. This 
provision,  which  introduced  a limitation  of the  designs  with  which  a  comparison  was  to be 
made when assessing the individual  character of a design, was intended to alleviate the  effect 
of  the  relatively  high  threshold  originally  proposed  by  the  Commission  and  to  avoid  a 
situation where access to protection would have become unduly difficult.  As the provision has 
become  superfluous  after  the  lowering  of  the  "threshold"  requested  by  Parliament,  it  was 
deleted  in the  amended  proposal. 

EXPLANATIONS  AS  TO  THE  RECITALS 

The only Parliament amendment  relating to the recitals is a proposal  for  a new recital  which, 
in  turn,  is  linked  to  the  abovementioned  proposal  for  a  provision  introducing  a  procedural 
assumption.  As the Commission  cannot,  as mentioned  above,  accept  that  amendment,  it  can 
only  reject  the recital  referring  to it  as well. 

The  Commission  has,  on  the  other  hand,  introduced  six  new  Recitals:  Recital  12a, 
which  clarifies  the  amendment  referring  to  the  protection  criteria  for  parts  in  Article  3(3), 
Recitals  16a,  16b,  16c  and  16d,  which  refer  to  Article  14  and,  more  specifically,  to  the 
remuneration  right  introduced  by  Parliament's  amendment  to  Article  14,  and,  finally, 
Recital  16e, which  states the grounds for the new provision relating to a right to  information, 
which  was included  in  the amendment  proposal  as Article  16a, following  an  amendment  by 
the  European  Parliament. 

For an explanation  as to Recitals  12a,  16a,  16d and  16e, reference  is made to the explanation 
given  in  this  memorandum  in  relation  as  to  the  Articles  to  which  they  refer.  Recitals  16b 
and  16c are  clarified  hereunder. 

Recital  16b 

This  Recital  clarifies  one  aspect  in  the  application  of  the  repair  clause  with  a  remuneration 
system.  In  some  cases,  an  agreement  between  the  right  holder  and  the  third  party  as to  the 
amount of money  which can, in a specific  case, be deemed to represent a "fair  and reasonable 
remuneration"  may  be  lacking.  If  the  application  of  the  repair  clause  were  to  be  made 
preconditional  upon  such  an  agreement,  the  third  party  would  sometimes  have to wait  for  a 
considerable  amount  of time  before  an  agreement  is  reached  and  before  being  able  to use a 
design  for  repair  purposes.  Where,  in  some  cases, the  remuneration  would  have to be  fixed 
through litigation  or arbitration  over the course of several years, the repair clause would  have 
been  rendered  ineffective.  The  purpose  of  this Recital  is to  avert  this  danger. 

Notwithstanding this Recital, the right holder remains protected against mala fide third parties 
through  the  safeguard  provision  introduced  in  Article  14, paragraph  4. 

Recital  16c 

This Recital  has  been  introduced  to  make  it  clear  that  the use  of  the  repair  clause  does  not 
in any way establish  a relationship  between the right holder and the third  party  which  can be 
compared  to that  existing  between  a licensor  and  a licensee.  The Recital  also  states that  the 
consumer  who  chooses  to  have  a  product  repaired  with  parts  stemming  from  a third  party 
does not thereby derive any rights or claims against the manufacturer  of the complex product. 

The remaining amendments to the recitals aim at the clarification  of the text or the  necessary 
adaptation  of  the recitals  following  amendments  of the  Articles to which  they  relate. 

EXPLANATION  AS  TO  THE  ARTICLES 

In  order  to  make  it  easier  to  cross-reference  similar  Articles  which  can  be  found  in  both 
Proposals,  the  Commission  has  added  headings  to  the  various  Articles  for  the  Directive 
proposal.  It  is understood,  however,  that  these  headings  are not  legally  binding. 

Article 1 

Paragraph  (a) 

This  paragraph  has  been  changed,  in  accordance  with  an  amendment  adopted  by  the 
European  Parliament, by adding wording to the effect  that the design to be protected  must be 
"outwardly  visible". 

It  must  first  of  all  be  pointed  out  in  this  context  that  the  addition  of  a visibility  criterion  in 
Article  1  brings into focus a confusion  concerning various meanings of the word  "part" in the 
English  language.  In  Article  1, the  word  is used  to  describe  any  feature  of  a product,  while 
in Article  3(3) and in Article  14, the word is used to describe, in concrete terms, a component 
part, which  is usually  also a product  in its own right. That is why  the word  "component"  has 
been  added  to  Article  3(3)  and  to  Article  14,  that  is,  whenever  the  word  "part"  is  used  to 
describe,  concretely,  a component  part. 

in  mind, 

introduced  by 

this  differentiation 

the  visibility  criterion 

the 
Bearing 
European  Parliament  can  be  looked  at  more  closely.  It  must  be  pointed  out  that  the 
Commission  does not  expect this amendment  to  entail  substantial  changes  in the  application 
of the provision  itself.  Indeed, this amendment  must  not be confused  with the amendment  to 
Article  3, which  states that  parts, in order to be eligible for  protection,  have to remain visible 
during  the  normal  use  of  the  complex  product  they  belong  to.  The  criterion  introduced  in 
Article  1 does not  look  at the visibility  of the part  as component  part  of  a complex  product, 
as provided for in Article  3(3), but of the appearance of a product or a part thereof.  Therefore, 
if  a right holder  wishes to protect the  appearance  of,  for  example, the interior  compartments 
of  a  suitcase  (which  do  not  constitute  component  parts  within  the  meaning  of  Article 3, 
paragraph  (3),  but  which  are  a  part  within  the  meaning  of  Article  1),  he  can  do  so  by 
applying  for  protection  of  a  part  of  a  product  which,  in  the  case  of  his  application,  is 
"the  compartments  of  a  suitcase".  The  design  for  which  protection  is  claimed  is  then 
outwardly  visible. 

Thus,  an appearance will only be invisible and lead to exclusion from  protection in the rarest 
of  cases,  such  as, for  example,  the boring  of  a  firearm  barrel.  However,  an  exclusion  from 
protection  for  component parts of complex products, which  are independent  products in their 
own  right,  may  follow  from  the  provision  in  Article  3, paragraph  (3). 

Another change is the addition of the wording  "in particular", where the Commission  follows 
a proposal  of the Economic and  Social Committee. The intention of this proposal  is to  clarify 
that  the  list  of  features  of  appearance  is not  meant  to  be  exhaustive. 

Finally, the addition of the wording  "texture" intends to add a dimension of design which was 
deemed  to be lacking  in the  original  proposal. 

Article  2 

Paragraph  2 (new) 

This paragraph has been  inserted  to clarify  that the scope of application  of the Directive  also 
covers  designs  in Member  States which  do not  have a formal  registration  system,  but  where 
protection  is granted  after  a deposit  and  official  publication  of  the  design. 

Article  3 

Paragraph  3 

To  comply  with  the  amendments  made  by  the  European  Parliament,  an  extra  requirement 
relating  to  the  protection  of  parts  has  been  added  to  this  paragraph:  the  visible  featiires  of 
parts  of  a  complex  product  can  only  qualify  for  protection  in  their  own  right  if  the  parts 
are  visible  during  normal  use  of  the  complex  product.  The  amendment  is  especially 
relevant  to  the  automotive-industry,  where  it  means  that  certain  spare  parts,  the  so-called 
"under-the-bonnet"  parts,  are  excluded  from  protection. 

In  order  to  avoid  a  confusion  as  regards  the  word  "part",  which,  in  English,  can  have  two 
meanings,  the  word  "component"  has  been  added  to  the  text  (see  explanation  as  regards 
Article  1). 

Paragraph  4 

Following the amendments  adopted  by the European  Parliament  as regards paragraph  3, this 
paragraph  defines  the notion of  "normal use". It  should  be noted that this requirement  should 
not  be  understood  to  mean  that  parts  must  be  visible  at  all  times  during  normal  use.  in  the 
case  of  a car,  normal  use  can  also  mean  that  someone  sits  in  the  back  of  the  car,  or  walks 
around it. The wording does, however, exclude from  protection those parts whose design does 
not  normally  play  a  role  for  the  consumer  because  it  is  only  visible  during  repair  or 
maintenance. 

Article 4 

Paragraph 2  (deleted) 

The  original  paragraph 2 has been  amended  and moved  to Article 6 in the Directive.  This 
change is related to the amendment  to Article 5, paragraph  (2), which made  it possible to 
regroup the provisions on the disclosure of the design in a single provision which would be 
applicable both to Article 4 and Article 5. 

Article 5 

Paragraph  1 

Paragraph  1 defines the individual  character of a design and, in effect,  sets the threshold for 
protection. The European Parliament has wished to lower this threshold by deleting the word 
"significantly".  Because  the  provision  still  contains  the  requirement  of  a  different  overall 
impression, this deletion does not unduly lower the threshold, and the Commission  therefore 
feels  it can accept the amendment. 

As a  consequence  of  the  lowering  of  the  "threshold",  the  Commission  did,  however,  feel 
compelled to delete paragraph (2) of the initial  proposal, for the following  reason.  In order 
to alleviate the effect  of the relatively high threshold provided for in the original wording of 
paragraph (1), paragraph (2) substantially restricted the designs which were to be taken into 
consideration  as comparison  material  when  assessing  the  individual  character  of  a design. 
Now that the "threshold" has been lowered, such a limitation would be counterproductive, and 
the  comparison  should  therefore  be  made  with  any  design  disclosed  before  the  design  in 
question.  This wording was easily integrated into paragraph  (1). This change, in turn, made 
it possible to have a single Article defining  the concept of  "making available to the public" 
for  Article 4 as well as for  Article 5 (see the explanation  concerning Article 6). 

Paragraph 2 

This paragraph (paragraph  3 in the original Commission proposal) contains a set of guidelines 
for  use  by  national  Courts  when  assessing  the  individual  character  of  a  design.  In  this 
assessment,  commonalties with a previous design were, originally, to be given more weight 
than  differences.  The intention  of this provision  was to make sure that,  in order to achieve 
protectability  for  a new  design,  it  would  not  be  enough  to  introduce  a  certain  number  of 
minor  differences  to an existing one. However,  following  its wish to lower the  "threshold" 
in paragraph  1, the European Parliament  also wanted to give equal weight to commonalties 
and differences.  The amendment of the guideline in accordance with these wishes, however, 
deprives  it  of  its  specific  significance  and  thereby  makes  it  redundant.  The  Commission 
therefore chose to delete it in its amended proposal and to restrict the guidance to that relating 
to the freedom  of the designer. 

Article  6 

Paragraph  1 

The  original  Article 4(2)  has  been  transferred  to  Article  6  since  this  provision  not  only 
concerns  Article  4, but  also Article  5, in  its new  form. 

The  Article  has  furthermore  been  amended  in  accordance  with  the  wishes  of  the 
European  Parliament  and  the  Economic  and  Social  Committee  through  the  introduction  of 
what  is commonly  known  as the  "safeguard  clause".  Its aim is to protect the design  industry 
from  claims  that  a  design  right  is  not  valid  because  there  was  an  earlier  design  in  use 
somewhere in the world  where the European  industry  could not possibly  have been  aware of 
it.  The  intention  of  this  provision  is  to  avoid  the  situation  where  design  rights  can  be 
invalidated by infringers claiming that antecedents can be found  in remote places or museums. 

Paragraph  2 

This paragraph  has been  transferred  from  paragraph  1 in the  original  Commission  proposal. 

Paragraph  3 

This  paragraph  (paragraph  2  in  the  original  Commission  proposal)  was  reworded  to  clarify 
the  case  where  disclosure  is  the  result  of  a  breach  of  confidence.  There  is  no  change  in 
substance. 

Article  7 

Paragraph  I 

Although  the  question  whether  a  design  does  or  does  not  contain  any  aesthetic  elements  is 
irrelevant in the context of the requirements for protection, as set out in the Proposal, the need 
was felt  for  a provision  indicating that  protection  should  not be  available in those  extremely 
rare cases where form  necessarily  follows  function.  Even though  Parliament  did not adopt an 
amendment concerning Article  7, paragraph (1), the Commission felt that clearer wording was 
needed,  especially  after  the  amendment  proposed  as regards  paragraph  (2). 

Paragraph  2 

Paragraph  2  has been  reworded  to  allow  for  the wishes  of  the  European  Parliament,  which 
sought  a clearer definition  of the "must fit" clause. The current text is closely  modelled upon 
the corresponding provision of the United Kingdom Patents, Designs and Copyright Act  1988. 

Article  8 

The  wording  of  Article  8  has  been  modified  slightly  in  order  to  clarify  that  it  is  not  the 
exploitation  or publication  of  a design,  but the design  itself  which  may be contrary  to  public 
policy  or  morality. 

Article  9 

Paragraph  1 

in  order  to  follow 

the  wishes  of  the 
The  word  "significantly"  has  been  deleted 
European  Parliament.  Also,  the  wording  "similar"  has  been  replaced  by  the  wording  "not 
different".  This  negative  qualification  was  chosen  to  ensure  compatibility  between  the 
formulation  of  the  scope  of  protection  in  Article  9,  paragraph  (1),  and  the  definition  of 
individual  character  given  in  Article  5(1). Indeed,  these provisions  have to be worded  so as 
to  avoid  the  situation  where  different  interpretations  of  the  wording  "similar"  and  "not 
different"  would  create  a grey  area where  a design  is eligible  for  protection  in  its own  right 
under the wording  of Article  5, and,  at the same time,  constitutes  an infringement  of a prior 
design under the wording of Article  9. This danger has been averted through the uniform  use 
of the  wording  "not  different".  This  wording,  as used  in  Article  9,  paragraph  (1),  defines  a 
criterion  which  is  an  exact  mirror  image  of  that  defined  in  Article  5,  paragraph  (1). 
Consequently,  all  designs which do not qualify  for  individual  character will be considered  to 
be  infringing. 

Paragraph  2 

The  explanation  given  for  the  amendment  of  Article  5,  paragraph  (2)  also  applies  to  the 
amendment  to this  paragraph. 

Article  11 

Paragraph  1 

As  this  provision  is  intended  to  provide  an  exhaustive  list  of  invalidity  grounds,  several 
grounds which exist in certain Member States, but were missing in the original  proposal were 
added  in paragraphs  (e), (f)  and  (g). Because  the instances  of  unauthorized  use  described  in 
these new grounds can be prosecuted and prohibited by virtue of the relevant rights, the scope 
of  these  grounds  is  rather  limited.  Their  main  aim  is  to  ensure  that,  regardless  of  the 
possibility of prohibiting infringements,  infringing rights can be taken off the design registers, 
thus  contributing  to  keeping  these  registers  "clean". 

Furthermore,  the provision  which  was contained  in paragraph  (2) of the  original  proposal  is 
now to  be found  in  paragraph  (h).  This  is a drafting  amendment  only 

Paragraph  2 (new) 

In a number  of cases, only  minor alterations of the design  are required to avoid  invalidity. A 
possibility  to  protect  the  design  in  an  amended  form  has therefore  been  foreseen. 

Paragraph  4 

This paragraph  was to be found  in  Article  16 of the Commission's  original  proposal  and  has 
been  integrated  into  Article  11 in  the interest  of  coherence. 

Article 14 

Several  important  amendments  of  the  European  Parliament  focused  on  modalities  of  the 
repair clause contained in Article 14. 

Paragraph  1 

Where the initial proposal  provided free  reproduction  of certain  spare parts after  a phase-in 
period of three years, the European Parliament has in its amendments eliminated this phase-in 
period and introduced a remuneration system that will operate as from the date of registration ' 
of the design. 

Further, in order to provide the right holder with the information which is needed to establish 
the correctness of the remuneration  paid by the third  party, the Commission has introduced 
an  additional  obligation,  namely  an  obligation  for  the third  party  to offer  to  provide  such 
information  in a regular and reliable manner. 

In  order  to  avoid  confusion  concerning  various  meanings  of  the  word  "part"  (see  the 
explanation  concerning Article  1), the word  "component" was added to the wording of this 
paragraph. 

Paragraph 2  (new) 

This  paragraph  was  inserted  to  comply  with  a  European  Parliament  amendment  which 
provided  that,  when  parts  falling  within  the  scope  of  application  of  the  repair  clause  are 
manufactured  outside the Community  and then imported, the remuneration  must be paid by 
the importer. This provision was slightly modified  to guarantee payment of the remuneration 
also in cases of intra-Community trade, when parts are reproduced  freely  in a Member State 
where  the  designer  or  his  successor  in  title  has  not  taken  out  protection  of  the  relevant 
designs, and are then imported into another Member State where he has. In this last case, the 
Community exhaustion of rights doctrine cannot apply, because its decisive element, namely 
the existence of a situation where a product has been put on the market with the consent of 
the right holder, is missing. 

Paragraph  3  (new) 

The Commission has followed  the line set out by the European Parliament, but has added a 
set of guidelines to ensure that the remuneration  system  functions  similarly  throughout  the 
Community,  and that the spare part market becomes a level playing  field. 

Existing  legislation  concerning  similar  systems  provides  little  guidance  as  to  what  is 
considered  to  be  a  "fair  and  reasonable  remuneration".  Failing  agreements  by  the  parties 
concerned,  the  rate  of  remuneration  is  normally  decided  by  domestic  Courts.  Since 
interference with national procedures needs to be avoided, it did not seem appropriate to deal 
with  procedural  aspects.  However,  in  order  to  reduce  litigation  and/or  arbitration,  the 
Commission considered that it would be necessary to clarify  the basis which should be used 
in calculating the amount of the remuneration. 

The  most  realistic  basis  for  such  calculation  seems  to  be  an  amount  related  to  the  costs 
incurred by the original  producer  in developing the design.  This investment  should  therefore 
primarily  be taken  into  consideration. 

Paragraph  4 (new) 

In  devising  concrete  guidelines  for  the  functioning  of  the repair  clause with  a  remuneration 
system,  one  of  the  concerns  of  the  Commission  is  that,  in  case  of  manifest  abuse  of  the 
repair  clause,  a  right  holder  should  not  be  deprived  of  the  effective  legal  remedy  provided 
under  national  law  by  an  infringement  action.  This  could  for  example  be  the  case  when  a 
right holder is confronted  with a third  party who refers to the repair clause, but who is or will 
evidently  be  unable  or  unwilling  to  pay  the  remuneration  offered  by  him,  or  to  furnish  the 
information  which  is  needed  by  the  right  holder  to  assess  if  he  has  received  the  right 
remuneration.  Therefore,  the Commission  introduced  a provision to the effect  that,  if  a right 
holder can provide evidence to sustain such a claim, he can avail himself of such  infringement 
procedures  as  are provided  for  under  national  law. 

Paragraph  5  (new) 

This  paragraph,  which  provides  for  an  analysis  of  the  functioning  of  the  repair  clause 
five  years  after  the  entry  into  force  of  the  Directive,  was  inserted  to  comply  with  an 
amendment adopted by the European Parliament.  Such an analysis will be especially  relevant 
in assessing the effects  of the repair clause in ensuring the existence of an open market in the 
sector  of  spare  car parts. 

Although  the  Parliament  amendment  provided  for  an  analysis  of  the  functioning  of  the 
Directive  as  a  whole,  the  Commission  considered  that  it  would  act  in  accordance  with 
Parliament's  intentions  by  restricting  the  scope  of  such  an  analysis  to  the  effects  of  the 
repair  clause.  Indeed,  the effects  of the Directive  as a whole can only  be assessed  after  it has 
been  transposed  in  all Member  States, i.e.  well  into the  five-year  period,  whereas the  effects 
of  the  repair  clause  could  probably  be  assessed  fairly  rapidly. 

Article  15 

The extent of the repair clause could have certain  repercussions on the provision  dealing with 
the  exhaustion  of  rights,  contained  in  Article  15. 

With  reference  to  the  cases  C-19/84  Pharmon  BV  v  Hoechst  AG  [1985]  ECR2281  and 
C-9/93  IHT  Internationale  Heiztechnik  GmbH  and  UWE  Danziger  v  Ideal  Standard  GmbH 
and  Wabco  Standard  GmbH  [1994]  ECR  1-2789,  where  the  exhaustion  was  deemed  not  to 
apply  because  of  a lack  of  consent,  it  was  thought  advisable  to clarify  that,  notwithstanding 
the  fact  that  application  of  Article  14  may  imply  that  no  consent  has  been  given,  the 
exhaustion  of  rights-doctrine  still  applies. 

10 

Article  16  (new) 

The  original  Article  16 is now to be  found  in  Article  11(4). 

inserted 

the 
The  new  Article  16  has  been 
European  Parliament and the European Economic and  Social Committee. It was felt that such 
a  provision  was  needed  in  this  area  in  order  to  provide  more  means to  fight  counterfeiting. 
The provision is modelled  on,  albeit not identical  to German  law.  As formulated,  it makes it 
clear that, in the case of interlocutory  measures, the information  can be requested  prior to the 
final judgement  in  an  infringement  case. 

in  accordance  with 

the  wishes  of 

The provision  contained  in  paragraph  (3)(d)  states that the obligation to provide  information 
cannot  run  counter  to  the  generally  recognised  principle  of  law  that  one  cannot  legally  be 
compelled  to  incriminate  himself. 

Article  18 

Paragraph  1 

This  paragraph  has  been  modified  following  the  suggestion  that  the  Directive  on  the  legal 
protection of designs may not be the appropriate place for the harmonisation of copyright law. 

Paragraph  2 (deleted) 

This  paragraph,  which  contained  the  requirement  of  national  treatment,  required  each 
Member  State  to  guarantee  nationals  of  other  Member  States  a treatment  which  is  not  less 
favourable  than that given to its own nationals with regard  to the protection  of designs under 
national  copyright  law.  However,  according  to  case  C-92/92  Phil  Collins  v  Imtrat  [1993] 
ECR  I  -5145,  the  principle  of  national  treatment  follows  from  the  non-discrimination 
principle  in Article  6 EC  Treaty,  and  is thereby  already  guaranteed  by  Community  law  The 
original  provision  was therefore  superfluous,  and  the  Commission  deleted  it. 

Article  19 

Paragraph  1 

As a result  of  delays in the procedure  leading to  final  adoption  of the Directive,  the  date by 
which  it  has to  be transposed  into  national  law  has  been  modified. 

11 

Amended  proposal  for  a 
EUROPEAN  PARLIAMENT  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), 

Acting  in  accordance  with  the  procedure  laid  down  in  Article  189b  of  the Treaty(3), 

( i) 

(2) 

(3) 

OJ  NoC  345, 23.12.1993,  p.  14. 
OJ  No C  388, 31.12.1994,  p.  9 and  OJ No  C  110,  2.5.1995,  p.  12. 
Opinion  of  the  European  Parliament  of  12  October  1995,  OJ  No  C  287,  30.10.1995, 
p.  157 
Common  Position  of the Council  of  ...  1996 (not yet  published  in the Official  Journal) 
Decision  of  the  European  Parliament  of  ...  (not  yet  published  in the  Official  Journal). 

12 

Original  proposai 

Amended  proposal 

1.  Whereas  the  objectives  of the 

1.  Unchanged. 

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; 

Unchanged. 

3.  Whereas  such  differences  in  the 

3  Unchanged. 

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

13 

Original  proposal 

Amended  proposal 

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; 

4.  Unchanged. 

5.  Unchanged. 

6.  Whereas  it is unnecessary  to 

6.  Unchanged. 

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

7.  Whereas  Member  States  should 

7.  Unchanged. 

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, 

Whereas  this  Directive  does  not 
exclude the  application  to  designs 
of  national  or  Community 
legislation  providing  for  protection 
other  than  that  conferred  by 
registration  or  publication  as 
design,  such  as the  legislation 
relating  to  unregistered  design 
rights,  trademarks,  patents  and 
utility  models,  unfair  competition 
or  civil  liability; 

14 

Original  proposal 

Amended  proposal 

9.  Whereas  the  attainment  of  the 

objectives  of the  internal  market  in 
the  field  of  designs  may  only  be 
fully  realised  following  further 
harmonisation  of  the  relevant 
provisions  of  the  copyright  laws  of 
Member  States,  in particular  those 
relating  to the  criterion  of 
originality;  whereas,  pending  such 
further  harmonisation,  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 contrary  to  Community  law  to 
apply,  in  the  relationship  between 
Member  States,  Article  2  paragraph 
(7)  of  the  Berne  Convention  for 
the  Protection  of  Literary  and 
Artistic  Works,  which  provides  that 
protection  under  copyright  law 
shall  be  afforded  only  subject  to 
reciprocity  in  the  country  of  origin 
of  the  design,  as  such  a 
requirement  is incompatible  with 
the  principle  of  non-discrimination; 

10.  Unchanged. 

Whereas  the  attainment  of  the 
objectives  of  the internal  market  in 
the  field  of  designs may  only  be 
fully  realised  following  further 
harmonisation  of the  relevant 
provisions  of the  copyright  laws  of 
Member  States,  in particular  those 
relating  to the  criterion  of 
originality;  whereas,  pending  such 
further  harmonisation,  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; 

Whereas  the  attainment  of  the 
objectives  of  the  internal  market 
requires 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; 

15 

Original  proposal 

Amended  proposal 

11.  Whereas  semiconductor  products 

11.  Unchanged*4*. 

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(4). 

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; 

12.  Unchanged. 

12a Whereas  protection  should  not  be 
extended  to those  component  parts 
which  are not visible  during 
normal  use  of  a product,  or  to 
those  features  of  such  part  which 
are  invisible  when  the  part  is 
mounted,  or  which  would  not,  in 
themselves,  fulfil  the  requirements 
as to novelty  and  individual 
character;  whereas  features  of 
design  which  are  excluded  from 
protection  for  these  reasons  should 
not  be  taken  into  consideration  for 
the  purpose  of  assessing  whether 
other  features  of  the  design  fulfil 
the  requirements  for  protection; 

(4)  O J N o L 2 4,  27.1.1987,  p. 36. 

(4)  Unchanged. 

16 

Original  proposal 

Amended  proposal 

13.  Whereas  technological  innovation 
should  not  be  hampered  by 
granting  design  protection  to 
features  dictated  solely  by  a 
technical  function;  whereas  it  is 
understood  that  this  does not  mean 
that  a design  must  have an 
aesthetic  quality;  whereas, 
likewise, the  interoperability  of 
products  of  different  makes  should 
not  be  hindered  by  extending 
protection  to the  design  of 
mechanical  fittings;  whereas 
features  of  a design  which  are 
excluded  from  protection  for  these 
reasons  should  not  be taken  into 
consideration  for  the purpose  of 
assessing whether  other  features  of 
the  design  fulfil  the  requirements 
for  protection; 

14.  Unchanged. 

5.  Unchanged. 

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 
the  innovative  characteristics  of 
modular  products  and  present  a 
major  marketing  asset  and 
therefore  should  be  eligible  for 
protection; 

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; 

17 

Original  proposal 

Amended  proposal 

16.  Whereas the  legal  protection  of 

16.  Unchanged. 

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; 

16a  Whereas  the  limitation  in  the 

exercise  of  the  rights  provided  for 
in the  context  of  the use  of 
designs  for  repair  purposes  should 
be  compensated  by  a fair  and 
reasonable  remuneration,  to  be 
calculated  primarily  on  the  basis 
of the  relevant  design 
development  costs; 

16b  Whereas  the  exercise  of  the  rights 
of  a third  party  to  reproduce  parts 
for  repair  purposes  should  not  be 
made  conditional  upon  agreement 
as to the  level  of  remuneration; 

16c  Whereas  the  use  of  a  design 

under  the  "repair  clause"  should 
not  create  a legal  link  between 
the  right  holder  and  the  third 
party  using  the  design;  whereas 
the  remuneration  to be  paid 
should  not  entail  an  obligation  on 
the  right  holder  to transfer  know-
how  and  shall  not  imply  that  the 
right  holder  is  considered  to  be 
the  manufacturer  of  a  reproduced 
part  as regards,  for  example,  rules 
or  agreements  regarding  product 
liability,  warranty  obligations  or 
product  safety  requirements. 

18 

Original  proposal 

Amended  proposal 

16d  Whereas,  in  order  to  prevent  a 
partitioning  of  the  Community 
market,  as regards  Community 
exhaustion  of  rights,  use  of  the 
design  right  by  a third  party 
against  payment  to the  right 
holder  should  have the  same 
effect  as the  marketing  of  a 
product  with  the  consent  of  the 
right  holder; 

16e  Whereas,  in  order  to  reinforce 
effective  action  against  the 
infringement  of  design  rights,  it  is 
important  that judicial  authorities 
be  entitled  to  issue  orders 
permitting  the  right  holder  to 
obtain  relevant  information 
concerning  the  production  and 
distribution  of  infringing 
products;  whereas  any  effective 
fight  against  product 
counterfeiting  makes  it  necessary 
to  provide  that  this remedy  is  to 
be  available  by  court  order,  where 
appropriate,  even  before  final 
judgment  in  an  infringement  case. 

17.  Whereas the provisions  of  this 

17.  Unchanged. 

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, 

18  Unchanged 

19 

Original  proposal 

Amended  proposal 

HAVE ADOPTED  THIS 
DIRECTIVE: 

HAVE ADOPTED  THIS 
DIRECTIVE: 

Article  1 

Article  1 
Definitions 

For  the purpose  of this Directive: 

For  the  purpose  of  this Directive: 

(a)  "design"  means the appearance  of 

(a)  "design"  means the  outwardly 

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; 

(b)  "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. 

visible  appearance  of the whole  or 
a  part  of  a product  resulting  from 
the features  of,  in  particular,  the 
lines,  contours,  colours,  shape, 
texture  and/or  materials of  the 
product  itself  and/or  its 
ornamentation; 

(b)  "product"  means  any  industrial  or 
handicraft  item,  including  parts 
intended  to be  assembled  into a 
complex  product,  packaging,  get-
up,  graphic  symbols  and 
typographic  typefaces,  but 
excluding  computer  programs. 

Article  2 

Article  2 
Scope  of  application 

This  Directive  shall  apply  to: 

This  Directive  shall  apply  to: 

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

(a)  Unchanged. 

(b)  design  rights  registered  at  the 
Benelux  Design  Office; 

(b)  Unchanged. 

(c)  design  rights  registered  under 

(c)  Unchanged. 

international  arrangements  which 
have  effect  in  a Member  State; 

(d)  applications  for  design  rights 

referred  to  under  (a) to (c). 

(d)  Unchanged. 

20 

Original  proposal 

Amended  proposal 

2.  The  publication  by  an  industrial 

property  office  of  a Member  State 
of  a design  filed  with  that  office 
shall,  for  the  purpose  of  this 
Directive,  be  considered  to be a 
registration. 

Article  3 

Article  3 
Protection  requirements 

1.  Member  States  shall  protect  the 
designs upon  registration,  by 
conferring  exclusive  rights  in 
accordance  with  the provisions  of 
the  Directive. 

1.  Unchanged. 

2.  A  design  shall  be  protected  by  a 

Unchanged. 

design  right  to the  extent that  it  is 
new  and  has an  individual 
character. 

3.  A design  of  a product  which 

3. 

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. 

A design  of  a product  which 
constitutes  a component  part  of a 
complex  product  shall  only  be 
considered  to be  new  and  to  have 
an  individual  character: 

(a) 

(b) 

if the  component  part,  when 
incorporated  into  the 
complex  product,  remains 
visible  during  normal  use of 
the  latter,  and 

to the  extent  that  the  visible 
features  of the  component 
part  fulfil  in  themselves  the 
requirement  as to  novelty  and 
individual  character. 

21 

Original  proposai 

Amended  proposal 

"Normal  use" within  the  meaning 
of  paragraph  (3)  (a)  shall  mean  use 
by the  end  user  and  shall  not 
include  maintenance,  servicing  or 
repair. 

Article  4 

Article  4 
Novelty 

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  priority  is claimed, the  date  of 
priority.  Designs  shall  be  deemed  to  be 
identical  if their  features  differ  only  in 
immaterial  details. 

2.  Deleted. 

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. 

22 

Original  proposal 

Amended  proposal 

Article  5 

Article  5 
Individual  character 

1.  A  design  shall  be  considered  to 

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). 

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

(a)  commercialised  in  the  market 

place,  whether  in  the 
Community  or  elsewhere,  at 
the  date  of  filing  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  the 
date  of  filing  the  application  or 
registration  or,  if  a priority  is 
claimed,  at the  date  of  priority. 

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. 

have  an  individual  character  if  the 
overall  impression  it  produces  on 
the  informed  user  differs  from  the 
overall  impression  produced  on 
such  a user  by  any  design  which 
has been  made  available  to  the 
public before  the  date  of  filing  of 
the  application  for  registration,  or, 
if  priority  is  claimed,  the  date  of 
priority. 

2.  Deleted. 

In  order  to  assess individual 
character,  the  degree  of  freedom  of 
the  designer  in  developing  the 
design  shall  be  taken  into 
consideration. 

23 

Original  proposal 

Amended  proposal 

Article  6 

Article  6 
Disclosure 

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  12-month  period 
preceding  the  date of  the  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. 

1.  For  the purpose  of  applying 

Articles  4  and  5, a design  shall  be 
deemed  to  have  been  made 
available  to the public  if  it  has 
been  published  following 
registration  or  otherwise,  or 
exhibited,  used  in trade  or 
otherwise  disclosed,  except  where 
these  events  could  not  reasonably 
have become  known  in the  normal 
course  of business to the  circles 
specialised  in  the  sector  concerned, 
operating  within  the  Community 
before  the  date of  filing  of  the 
application  for  registration  or,  if 
priority  is claimed,  the  date  of 
priority. 

The  design  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. 

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. 

2.  Disclosure  shall  not  be taken  into 

consideration  for  the  purpose  of 
applying  Articles  4  and  5 if a 
design  for  which  protection  is 
claimed  under  a  registered  design 
right  of  a Member  State  has been 
made  available  to the  public: 

(a)  by  the  designer,  his  successor 
in  title,  or  a third  person  as a 
result  of  information  provided 
or  action  taken  by  the 
designer,  or  his  successor  in 
title;  and 

24 

Original  proposal 

Amended  proposal 

(b)  during  the  12-month  period 

preceding  the  date  of the  filing 
of  the  application  or,  if 
priority  is claimed,  the  date  of 
priority. 

3.  The  provisions  of  paragraph  (2) 
shall  also  apply  if  the  design  has 
been  made  available  to the  public 
as  a consequence  of  an  abuse in 
relation  to the  designer  or  his 
successor  in  title,  unless,  as a 
result  of  the  abusive  conduct,  a 
Registered  Community  Design  or a 
registered  design  right  of  the 
Member  State  concerned  has  come 
into  existence. 

Article 7 
Designs  dictated  by  their  technical 
function  and  designs  of 
interconnections 

Article  7 

1.  A  design  right  shall  not  subsist  in a 

1.  A design  right  shall  not  subsist  in 

design  to the  extent  that  the 
realisation  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. 

features  of  appearance  of  a  product 
which  are  solely  dictated  by  its 
technical  function. 

2.  A  design  right  shall  not  subsist  in 

features  of  appearance  of  a  product 
which  must  necessarily  be 
reproduced  in  their  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 
connected  or  placed  in,  around  or 
against  another  product  so that 
either  product  may  perform  its 
function. 

25 

Original  proposal 

Amended  proposal 

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. 

Article  8 

3.  Unchanged. 

Article  8 
Designs  contrary  to  public  policy  or 
morality 

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. 

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

Article  9 

Article  9 
Scope  of  Protection 

1.  The  scope  of the  protection 

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. 

conferred  by  a design  right  shall 
include  any  design  which  does not 
produce  on the  informed  user  a 
different  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. 

2. 

In  order  to  assess the  scope of 
protection,  the  degree  of  freedom 
of the  designer  in  developing  his 
design  shall  be taken  into 
consideration. 

26 

Amended  proposal 

Article  10 
Term  of  protection 

Unchanged. 

Original  proposal 

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 

Article  11 
Invalidity  or  refusal  of  registration 

1.  A design  is  excluded  from 

registration,  or  if  registered  may  be 
declared  invalid,  only  in  the 
following  cases: 

1.  A  design  may  only  be  refused 
registration,  or,  if  registered, 
declared  invalid,  in  the  following 
cases: 

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

(a)  if  it  is not  a design  within  the 
meaning  of  Article  1, or  if  it 
does not  fulfil  the 
requirements  under  Article 3, 
or 

(b)  where  its  specific  technical 

(b)  if  its technical  and/or 

and/or  interconnecting  features 
are not  eligible  for  protection 
under  Article  7(1)  or  (2),  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 

(c)  if  it is  contrary  to  public 
policy  or to  accepted 
principles  of  morality,  or 

(d)  if the  applicant  for  or  the 

(d)  if  the  applicant  for  or  the 

holder  of  the  design  right  is 
not  entitled  to  it under  the  law 
of  the Member  State 
concerned. 

holder  of  the  design  right  is 
not  entitled  to  it under  the  law 
of  the Member  State 
concerned,  or 

27 

Original  proposal 

Amended  proposal 

(e)  if  a distinctive  sign  is used  in 
a  subsequent  design,  and 
Community  law  or the  law of 
the Member  State  governing 
that  sign  confers  on  the right 
holder  of the  sign  the  right  to 
prohibit  such  use,  or 

(f) 

if  the  design  constitutes  an 
unauthorised  use  of  a work 
protected  under  the  copyright 
law  of  the Member  State 
concerned,  or 

(g)  if  the  design  constitutes  an 
improper  use  of  any  of  the 
items  listed  in  Article  6ter of 
the  Paris  Convention  for  the 
Protection  of  Industrial 
Property,  or  of badges, 
emblems  and  escutcheons 
other  than  those  covered  by 
Article  6,erof the  said 
Convention  and which  are of 
particular  public  interest  in  the 
Member  State  concerned,  or 

(h)  if  a  conflicting  design  which 

has been  made  available  to the 
public  after  the date of  the 
filing  of  the  application  or,  if 
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. 

28 

Original  proposal 

Amended  proposal 

If  the  ground  for  invalidity  or  for 
refusal  of  registration  applies  only 
to  some  of  the  features  of  the 
design,  it  may  be  registered  or 
maintained  in  an  amended  form. 

2.  A  design  right  may  also  be 

2. 

declared  invalid  if  a  conflicting 
design  which  has been  made 
available to the  public  after  the 
date  of  the  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. 

3.  Any  Member  State  may  provide 

3.  Unchanged. 

that,  by  way  of  derogation  from  the 
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  this Directive  enter  into  force, 
shall  apply  to  design  rights  for 
which  application  has been  made 
prior  to that  date. 

4.  A design  right  may  be  declared 

invalid  even  after  it  has  lapsed  or 
has been  surrendered. 

29 

Original  proposal 

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.  The 
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. 

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. 

Article  13 

Amended  proposal 

Article  12 
Rights  conferred 
by  the  design  right 

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  copying  it, 
or  from  using  a design  included 
within  the  scope  of  protection  of 
the  design  right.  The 
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,  importing,  exporting  or 
stocking  such  a product  for  those 
purposes. 

Unchanged. 

Article  13 
Limitation  of  the  rights 
conferred  by  the  design  right 

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

1  Unchanged. 

(a)  acts  done  privately  and  for 
non-commercial  purposes; 

(a)  Unchanged. 

(b)  acts  done  for  experimental 

(b)  Unchanged. 

purposes; 

30 

Original  proposai 

Amended  proposal 

(c)  Unchanged. 

(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  the 
source. 

2. 

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

2.  Unchanged. 

(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: 

Article  14 
Use  of  a design  for  repair  purposes 

1  By  way  of  derogation  from 

Article  12, the  rights  conferred  by 
a  design  right  shall  not  be 
exercised  against  third  parties  who 
use  the  design,  provided  that: 

31 

Original  proposal 

Amended  proposal 

(a)  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; 

(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 

(b)  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. 

permit  the  repair  of  the 
complex  product  so  as to 
restore  its  original  appearance; 
and 

(c)  the  public  is informed  as to 

the  origin  of  the product  used 
for  the  repair  by  the use  of an 
indelible  marking,  such  as a 
trademark  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. 

32 

Original  proposal 

Amended  proposal 

2.  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. 

3. 

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  by  him. 

5.  No  later  than  five  years  after  the 
implementation  date  specified  in 
Article  19, the  Commission  shall 
submit  an  analysis  of  the 
consequences  of  the  provisions  of 
this  Article  for  the  Community 
industrial  sectors  most  affected, 
and  in  particular  for  manufacturers 
of  complex  products  such  as  motor 
vehicles  and  producers  of  spare 
parts.  If  necessary,  it  shall  propose 
to the European  Parliament  and  the 
Council  changes  to this  Article, 
after  consulting  the 
abovementioned  sectors. 

33 

Original  proposal 

Amended  proposal 

Article  15 

Article  15 
Exhaustion 

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,  with  his  consent,  or 
in  accordance  with  the  provisions  of 
Article  14. 

Article  16 

Article  16 

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

Deleted. 

Article  16a 
Right  to  information 

1.  The  Court  having jurisdiction  to 

hear  an  action  for  infringement  of 
a  design  right  or to  grant  a  request 
for  interlocutory  measures  shall,  at 
the  request  of  the  right  holder  and 
unless  there  are  special  reasons  for 
not  doing  so,  order  a person  to 
supply  that  right  holder  with 
information  as  to the  origin  and  the 
route  for  the  commercial 
distribution  of  goods  allegedly 
infringing  the  design  right,  if  the 
person  in  question: 

(a)  has been  found  in  possession, 

for  commercial  purposes,  of 
such  goods,  or 

34 

Original  proposal 

Amended  proposal 

(b)  has been  identified  by  a person 
under  (a)  as being the  origin 
or  a link  in the  route  for  the 
commercial  distribution  of 
such  goods. 

2.  The information  referred  to under 
paragraph  1 shall  comprise. 

(a)  the  names  and  addresses  of 

producers,  suppliers  and  other 
prior  possessors  of  the  product 
and  of  commercial  recipients 
or  outlets,  as well  as 

(b)  information  on  the  quantity  of 

goods  which  have  been 
produced,  delivered,  received 
or  commissioned. 

3.  Paragraphs  1 and  2  shall  be 
without  prejudice  to  other 
provisions: 

(a)  granting  the  right  holder  more 

far  reaching  rights  to 
information; 

(b)  governing  the use  of 

information  provided  under 
this  Article,  in  penal  or  civil 
procedures; 

(c)  governing  liability  for  the 

abuse  of  a right  to 
information;  or 

(d)  affording  the  possibility  of 

refusing  to  provide  information 
that  would  force  the  person 
referred  to  in  paragraph  1 to 
admit  the  existence  of  an 
infringement. 

35 

Original  proposal 

Amended  proposal 

Article  17 

Article  17 
Relationship  to  other  forms  of 
protection 

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. 

The provisions  of this Directive  shall 
be without  prejudice  to  any  provisions 
of  Community  law  or  of the  law  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 

Article  18 
Relationship  to  copyright 

A design  protected  by  a design  right 
registered  in,  or  in  respect  of,  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.  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. 

Pending  further  harmonisation  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. 

36 

Original  proposal 

Amended  proposal 

Deleted. 

Pending  further  harmonisation  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 

Article  19 
Implementation 

Member  States  shall  bring  into 
force  the  laws,  regulations  or 
administrative  provisions  necessary 
to  comply  with  this  Directive 
by  31  October  1996. 

1.  Member  States  shall  bring  into 
force  the  laws,  regulations  or 
administrative  provisions  necessary 
to  comply  with  this  Directive 
by  1 January  1998. 

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

When  Member  States  adopt  these 
provisions,  these  shall  contain  a 
reference  to this Directive  or  shall 
be  accompanied  by  such  reference 
at the 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. 

2.  Unchanged. 

37 

Original  proposal 

Amended  proposal 

Article  20 

This Directive  is addressed  to the 
Member  States. 

Article  20 
Entry  into  force 

This Directive  shall  enter  into force  on 
the twentieth  day  following  that  of  its 
publication  in  the  Official  Journal  of 
the European  Communities. 

Article  21 
Addressees 

This Directive  is addressed  to  the 
Member  States. 

Done  at  Brussels, 

For  the  European  Parliament 
The  President 

For the  Council 
The  President 

38 

ISSN 0254-1475 

COM(96) 66 final 

DOCUMENTS 

EN 

08 

Catalogue number  :  CB-CO-96-079-EN-C 

ISBN 92-78-00777-3 

Office for Official  Publications of the European Communities 

L-2985 Luxembourg 

39