Opinion of the Commission pursuant to Article 189B(2)(d) of the EC Treaty, on the European Parliament's amendments to the Council's common position regarding the proposal for a European Parliament and Council Directive on the legal protection of designs
Date: 1997-11-21
Institutions: European Commission
Subjects: approximation of laws, competition policy, designs and models, industrial property

COMMISSION  OF THE EUROPEAN  COMMUNITIES 

Brussels,  21.11.1997 
COM(97) 622 final -  COD 464 

OPINION  OF  THE  COMMISSION 
pursuant to Article  189 b  (2)  (d)  of  the EC  Treaty, 
on the European  Parliament's  amendments 
to the  Council's  common  position  regarding  the 

proposal  for  a 
EUROPEAN  PARLIAMENT  AND  COUNCIL  DIRECTIVE 

on the legal protection of designs 

AMENDING  THE PROPOSAL  OF  THE  COMMISSION 
pursuant to  Article  189  a (2)  of  the EC  Treaty 

1.  Historical background 

•  On 3 December  1993, the Commission submitted proposals for a Regulation on the 
Community  design1  and for  a Directive  on the  legal  protection  of  designs2  ("the 
Directive"). 

•  Parliament  decided  to  discuss  the proposal  for the  Directive  first  and to  adopt a 
position on the proposal  for a Regulation when it conducts the  second reading  of 
the  proposal  for  the  Directive.  Following  this  decision,  Parliament  adopted  its 
opinion on the Directive on 12 October 19953. 

•  The Economic  and Social  Committee adopted a first opinion on 6 July  19944 and 

an additional opinion on 22 February 19955. 

•  In  response  to  Parliament's  opinion  the  Commission  presented  an  amended 

proposal for a Directive on 14 March 19966. 

•  The Council adopted its common position on 17 June 19977. 

•  The  Commission  adopted  its  position  on the  Council's  common  position  on  19 

June 1997 and communicated it to the European Parliament8. 

•  On 22 October 1997, the European Parliament voted in favor of  12 amendments to 

the common position in second reading. 

2.  Objective of the Commission proposal 

The proposal for a Directive aims to ensure an effective  legal protection for designs 
within the Member States of the Community. It seeks to reduce the legal obstacles 
to freedom of movement for design goods and to the establishment of a system of 
undistorted competition in the internal market. To this end, it contains a series of 
definitions  and rules pertaining  to the definition  of "design", the requirement  for 
obtaining  protection  including  the  grounds  for  exclusion,  the  requirement's 
concerning individual character and novelty, the scope and term of protection, the 
grounds  for refusal  or invalidity,  the definition  of rights conferred  by the  design 
including their limitations and exhaustion of  rights. 

1 OJ No C  29, 31.01.1994, COM(93) 342 final. 
2 OJ No C 345, 23.12.1993, p. 14. COM(93) 344 final. 
3 OJ No C 287, 30.10.1995, p. 157. 
4 OJ No C 388, 31.12.1994, p. 9. 
5 OJ No CI  10, 02.05.1995, p. 12. 
6OJNoC142,  14.05.1996, p. 7. 
7 OJ No C 237, 04.08.1997, p. 1. 
8 SEC(97)1107final -  COD 464. 

3.  Opinion from the Commission to the amendments from Parliament 

The Commission  should  underline that on  19 June  1997, it was unable to  accept  the 
Council's  common  position,  in  particular  because  the  Council  left  out  the  repair 
clause as contained in Article  14 of the Commission's amended proposal of 1996. 

For the sake of clarity, the Commission's opinion on Parliament's amendments and its 
amended proposal, as annexed to this document, are to be read in the light of the said 
Council's common position. 

Consequently,  the  attached  amendments  would  modify  the  Council's  common 
position of 17 June 1997. 

3.1 Amendments which the Commission accepted 

The Commission accepted Amendments No 2 to 4, 7 to  11, and  13 for  the  following 
reasons. 

re Amendment No 2 

Re Amendment No 3 

The  13th recital  of  the  common  position  specifies  that  the 
individual  character  of  a  design  must  be  based  on  a  "clear" 
"overall different  impression", whereas the relevant provision 
in  the  Directive  (Article  5)  refers  to  an  "overall  different 
impression" only. 

the  common  position  does  not  comply  with 
Thus, 
Parliament's  and  the  Commission's  wish  to  lower  the 
threshold  for  protection,  as  explained  in  the  Commission's 
amended  proposal  of  1996.  In  addition,  it  is  felt  that  the 
adjective  "clearly"  in  recital  n°  13  unduly  introduces  a 
qualification,  which  is  not  in  conformity  with  the  wording 
and objectives of Article 5. 

The  Commission  supports  Parliament's  amendment  to  limit 
the  protection  of  component  parts  of  complex  products  to 
those  parts,  which  remain  visible  during  normal  use  of  the 
latter. The wording of Article 3(3)(a) of the common position 
is  considered  to  be  too  broad,  since  it  includes  any 
component part, which can reasonably be expected to remain 
visible during normal use. 

Parliament's  amendment  was  already  incorporated  in  the 
Commission's  amended  proposal  of  1996.  For  further 
comments, reference  is therefore made to the said proposal. 

re Amendment No 4 

The  Commission  supports  Parliament's  amendment 
to 
interpret  the  concept  of  "normal  use"  restrictively  (Article 
3(4)). 

Parliament's  amendment  was  already  incorporated  in  the 
further 
Commission's  amended  proposal  of  1996.  For 
comments, reference  is therefore made to the said proposal. 

re Amendment No 7 

The amendment  clarifies  that the total term  of protection  for 
designs shall be 25 years from the date of filing. 

re Amendment No 9 

The amendment does not change the substance, but improves 
the wording of Article  13(2) of the common position. 

re Amendment No 10  The  amendment  re-introduces  the  repair  clause,  as  redrafted 

by the Commission in its amended proposal of 1996. 

The  Commission  continues  to  believe  that  the  clause  is 
justified  and reasonable. 

re Amendment No  11  The  amendment  provides  for 

the  free  movement  of 
component  parts  which  are  commercialised  pursuant  to  the 
repair clause (amendment No 10). 

Parliament's  amendment  was  already  incorporated  in  the 
Commission's  amended  proposal  of  1996.  For 
further 
comments, reference is therefore made to the said proposal. 

re Amendment No  13  The Commission  supports  the revision  clause  (Article  18 of 
the  common  position),  as  redrafted  by  Parliament  in  its 
amendment,  because  it  is  based  on  the  assumption  that  the 
repair clause is re-introduced. 

3.2 Amendments which the Commission did not accept 

The  Commission  did  not  accept  Amendments  No  5,  6  and  12  for  the  following 
reasons. 

re Amendment No 5 

Although the amendment reflects what was in Article 6(3) of 
the  Commission's  amended  proposal  of  1996, 
the 
Commission agrees, after further reflection, with Article 6(3) 
of the Council's common position. 

re Amendment No 6 

re Amendment No 12 

Where a third party has, subsequent to an abusive disclosure 
of  a  design,  obtained  a  registered  design  right,  it  is  not 
justified  that the  person  who  is  legitimately  entitled  to  the 
design  right,  should  be  deprived  of  his  right  to  claim 
proprietorship of such design. 

The Commission can not accept Amendment No 6, because it 
enlarges, without good reason, the scope of application of the 
'must fit' exception  as redrafted  in its  amended proposal  of 
1996. 

Moreover,  the  wording  of  Amendment  No  6  is  relatively 
open-ended and goes therefore beyond for what is needed in 
the light of a 'must fit' clause. 

Although the Commission is sympathetic to rules, envisaging 
the  combat  of  counterfeiting,  it  considers  that  the  Design 
Directive  should  no  longer  be  burdened  with  this  type  of 
procedural provisions. 

It  is  considered  better to  handle  the  issue  of  counterfeiting 
horizontally (in the near future), i.e through the inclusion of a 
set  of  complete  measures  against  counterfeiting,  including, 
for example all industrial property rights. 

Amended proposal for a 

European Parliament and Council Directive on the legal protection of designs 

Ccramoa position ol'ihe OOURCU 

-Àn*ceàîî«îïs f;v if ànUrani 

A. 

(Amendment 2) 
Recital 13 

13.  Whereas  the  assessment  as to  whether  a 
design has individual character should be based 
on whether the overall impression produced on 
an  informed  user  viewing  She  design  clearly 
differs from the existing design corpus; taking 
into consideration the nature of the product to 
which  the  design  is  applied  or  in  which  it  is 
incorporated,  and  in  particular  the  industrial 
sector  to  which  it  belongs  and  the  degree  of 
freedom  of  the  designer  in  developing  the 
• 
design; 

'  „ 

!3.  •  Whereas the- assessment as to whether 
a design has indivktaal fâmziïtë: should be based 
on whether the overall impression produced on 
an informed user viewing She ùmga  differs from 
into 
the  existing  - design  corpus, 
consideration the stature of the product to which 
is  applied  cr  in  which  it  is 
the  design 
incorporated,  mé 
in  particuiar  the  industrial 
sector  to  which  it  belongs  and  the  degree  of 
freedom  of  the  designer  in  developing  the 
design; 

taking 

(Amendment  3) 
Article 3(3)(a) 

(a)  if the component part, notwithstanding its 
having been incorporated into the complex 
product,  could  reasonably be expected  to 
remain  visible  during  normal  use  of  the 
latter, and 

(a) 

if the component part, once it has been 
complex 
into 
incorporated 
product, remains visible during normal 
use of the latter, and 

the 

(Amendment  4) 
Article 3(4) 

4.  "Normal  use"  within  the  meaning  of 
paragraph (3}(a) shall mean any use other than 
maintenance, servicing or repair. 

4.  "Normal  use"  within 
the  meaning  of 
paragraph 3(a) shall mean use by the end user-
excluding maintenance, servicing or repair work. 

(Amendment 7) 
Article 10 

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

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

(Amendment 9) 
Article  13(2), introduction 

In addition, the rights conferred  by a design 

2. 
right  upon registration shall not extend to: 

2.  In addition, the rights conferred  by a design 
right upon registration  may not be exercised in 
respect of: 

(Amendment  10) 
Article 14 

Transitional  provision 

Use of a design for  repair purposes 

Until such time as amendments to this Directive 
are adopted  upon  proposal  by the Commission 
in accordance with the provisions of Article  18, 
Member  States  may  maintain  in  force  or 
introduce  any provisions  affecting  the use of a 
protected  design for  the purpose of  permitting 
the repair of a complex product  so as to restore 
its  original  appearance,  where  the  product 
incorporating the design or to which the design 
is  applied  constitutes  a  component  part  of a 
complex  product  upon  whose  appearance  the 
protected  design is dependent 

-L  By way  of  derogation  from  Article  12.  the 
rights  conferred  bv a design  right  shall  not  be 
exercised  against  third  parties  who  use  the 
design, provided  that: 

(a) 

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

the  protected  design 

(b) 

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

9 

(c) 

the  public  is  informed  as to  the  origin  of 
the product  used for the repair hy thp  U<K> 
of  an  indelible  marking,  such  as  a  trade 
mark  or  a  trade  name,  or  in  another 
appropriate  form; and 

(d} 

the third party has: 

(i) 

(ii) 

(iii) 

notified  the  right  holder  of  the 
intended use of the design: 

offered  the  right  holder  a  fair  and 
reasonable  remuneration  for  that 
use: and 

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. 

Save as otherwise agreed, the obligations 
T 
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. 

In  calculating 

the  remuneration, 

y 
the 
investment made in development  of the relevant 
for 
design 
consideration. 

the  primary  basis 

shall  be 

4. 
Paragraph  1  shall  not  apply  if  the  right 
holder provides evidence to sustain a claim that 
the  party  upon  whom  the  obligations  under 
paragraph  1(d)  are  incumbent  is  unable  or 
unwilling  to  comply  with  them  or  to  pay  the 
remuneration  offered  bv him. 

(Amendment  11 ) 
Article  15 

The  rights  conferred  by  a  design  right  upon 
registration shall not extend to acts relating to a 
product  in which  a design  included  within  the 
scope  of  protection  of  the  design  right  is 
incorporated or to which it is applied, when the 
product  has  been  put  on  the  market  in  the 
Community by the holder of the design right or 
with his consent. 

The  rights  conferred  by  a  design  right  upon 
registration shall not extend to acts relating to a 
product  in which  a  design  included  within  the 
scope  of  protection  of  the  design  right  is 
incorporated  or to which it is applied, when the 
product  has  been  put  on  the  market  in  the 
Community by the holder of the design right or 
with  his consent  or  in accordance  with  Article 
14. 

(Amendment  13) 
Article  18 

the 

implementation  date 
Five  years  after 
specified  in  Article  19,  the  Commission  shall 
submit  an analysis  of  the  consequences  of  the 
provisions  of  this  Directive  for  Community 
industry, for consumers, for competition and for 
the  functioning  of  the  internal  market.  It  shall 
propose  to  the  European  Parliament  and  the 
Council any changes to this Directive needed  to 
complete  the  internal  market  in  respect  of 
component  parts of complex  products  and any 
other changes which it considers  necessary. 

the 

implementation  date 
Five  years  after 
specified  in  Article  19,  the  Commission  shall 
submit  an  analysis  of  the  consequences  of  the 
provisions of this Directive  for competition  and 
the  functioning  of  the  internal  market,  for  the 
industrial  sectors  which  are  most  affected, 
particularly manufacturers  of complex  products 
and  component  parts,  and  for  consumers  If 
necessary  it  shall  propose  to  the  European 
Parliament  and the  Council  any changes  to  this 
Directive  which  prove  necessary  in the  light  of 
consultation  with the parties most  affected 

// 

ISSN 0254-1475 

COM(97) 622  final 

DOCUMENTS 

EN 

06  08  02  10 

Catalogue number  :  CB-C0-97-638-EN-C 

ISBN 92-78-27794-0 

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