COMMISSION STAFF WORKING DOCUMENT EVALUATION of EU legislation on design protection
Date: 2020-11-06
Institutions: Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs, European Commission
Subjects: EU Member State, EU trade mark, European Union Intellectual Property Office, application of EU law, designs and models, single market, spare part, trade-mark law

EN 

  EN 

   EUROPEAN COMMISSION  Brussels, 6.11.2020  SWD(2020) 264 final  COMMISSION STAFF WORKING DOCUMENT  EVALUATION  of EU legislation on design protection {SWD(2020) 265 final}  
 
 
Table of contents 

1. 

2. 

INTRODUCTION ............................................................................................................................... 4 

BACKGROUND TO THE INTERVENTION ................................................................................. 5 

2.1.  DESCRIPTION OF THE INTERVENTION AND ITS OBJECTIVES ............................................... 5 

2.2.  BASELINE AND POINTS OF COMPARISON .................................................................................. 6 

3. 

IMPLEMENTATION/STATE OF PLAY ........................................................................................ 9 

3.1.  DESCRIPTION OF THE CURRENT SITUATION ............................................................................ 9 

3.2.  USE OF THE DESIGN PROTECTION SYSTEM ............................................................................ 10 

3.3.  TECHNOLOGICAL DEVELOPMENT AND AWARENESS OF DESIGN PROTECTION ........... 16 

4.  METHOD .......................................................................................................................................... 18 

4.1.  SHORT DESCRIPTION OF METHODOLOGY ............................................................................... 18 

4.2.  LIMITATIONS AND ROBUSTNESS OF FINDINGS ..................................................................... 18 

5.  ANALYSIS ........................................................................................................................................ 19 

5.1.  OVERALL FUNCTIONING OF THE EU SYSTEM FOR DESIGN PROTECTION .............. 19 

5.1.1. GENERAL  FEEDBACK  ON  THE  FUNCTIONING  OF  THE  EU  SYSTEM  FOR  DESIGN 

PROTECTION .................................................................................................................................... 19 

5.1.2. GENERAL  FEEDBACK  ON  THE  ACHIEVEMENT  OF  THE  EU  INTERVENTION’S 

OBJECTIVES ..................................................................................................................................... 20 

5.2.  PROTECTION TOOLS ................................................................................................................... 20 

5.2.1. DIFFERENT WAYS OF PROTECTING DESIGNS ......................................................................... 20 

5.2.2. PROTECTION REQUIREMENTS AND SCOPE OF PROTECTION ............................................. 24 

5.2.3. RIGHTS CONFERRED ...................................................................................................................... 29 

5.2.4. DEFENCES TO INFRINGEMENT ................................................................................................... 31 

5.2.5. TERM OF PROTECTION .................................................................................................................. 33 

5.2.6. RELATION TO OTHER FORMS OF IP PROTECTION ................................................................. 34 

5.2.7. CONCLUSIONS ................................................................................................................................. 36 

5.3.  PROCEDURES ................................................................................................................................. 37 

5.3.1. MEANS AND REQUIREMENTS OF DESIGN REPRESENTATION ............................................ 37 

5.3.2. DIFFERENT FILING OPTIONS ....................................................................................................... 41 

5.3.3. SUBSTANTIVE EXAMINATION .................................................................................................... 45 

5.3.4. ADMINISTRATIVE INVALIDITY PROCEEDINGS ...................................................................... 47 

5.3.5. EXPERIENCE WITH THE COMMUNITY AND NATIONAL REGISTRATION SYSTEMS ...... 49 

5.3.6. FEES ................................................................................................................................................... 53 

5.3.7. CONCLUSIONS ................................................................................................................................. 56 

5.4.  ENFORCEMENT ............................................................................................................................. 58 

5.4.1. DESIGN RIGHTS AS PROTECTION TOOLS AGAINST THE UNLAWFUL BEHAVIOUR OF 

THIRD PARTIES ............................................................................................................................... 59 

5.4.2. FUNCTIONING OF THE DESIGN ENFORCEMENT SYSTEM .................................................... 60 

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5.4.3. FUNCTIONING OF THE COMMUNITY DESIGN COURTS......................................................... 62 

5.4.4. CONCLUSIONS ................................................................................................................................. 63 

5.5.  SPARE PARTS ................................................................................................................................. 64 

5.5.1. SPECIFIC RULES ON SPARE PARTS USED FOR REPAIR PURPOSES ..................................... 64 

5.5.2. SEGMENTED INTERNAL MARKET FOR SPARE PARTS .......................................................... 66 

5.5.3. CONCLUSIONS ................................................................................................................................. 69 

5.6.  INTERNATIONAL DIMENSION .................................................................................................. 69 

5.6.1. LINK TO THE INTERNATIONAL HAGUE AGREEMENT .......................................................... 70 

5.6.2. CONFORMITY WITH THE DESIGN LAW TREATY .................................................................... 70 

5.7.  COHERENCE WITH THE TRADE MARK REFORM .............................................................. 71 

5.8.  COMPLIANCE WITH THE LISBON TREATY .......................................................................... 72 

5.9.  OVERALL CONCLUSIONS ........................................................................................................... 72 

ANNEX 1: PROCEDURAL INFORMATION ........................................................................................... 75 

ANNEX 2: STAKEHOLDER CONSULTATION – SYNOPSIS REPORT ............................................... 78 

ANNEX 3: METHODS AND ANALYTICAL MODELS .......................................................................... 85 

ANNEX  4:  RESULTS  OF  THE  OPEN  PUBLIC  CONSULTATION  –  FACTUAL  SUMMARY 

REPORT ............................................................................................................................................. 88 

ANNEX 5: OVERVIEW OF COSTS – BENEFITS IDENTIFIED IN THE EVALUATION .................. 132 

ANNEX 6: CONVERGENCE OF PRACTICES ....................................................................................... 138 

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Term or acronym 

3D Printing Study 

CJEU 

Directive 

Glossary 

Meaning or definition 

“The  Intellectual  property  implications  of  the  development  of  industrial  3D 
printing”, April 2020 

Court of Justice of the European Union 

Directive  98/71/EC  of  the  European  Parliament  and  of  the  Council  of 
13 October 1998 on the legal protection of designs 

EC 

European Commission  

Economic Review 

“The Economic Review of Industrial Design in Europe”, January 2015 

Enforcement 
Directive 

Directive  2004/48/EC  of  the  European  Parliament  and  of  the  Council  of 
29 April 2004 on the enforcement of intellectual property rights 

EPO 

EU 

EUIPO 

EUTM 

European Patent Office 

European Union 

European Union Intellectual Property Office 

European Union trade mark 

EUTM Regulation 

Regulation (EU) 2017/1001 of the European  Parliament and of the Council of 
14 June 2017 on the European Union trade mark 

Fees Regulation 

Commission Regulation (EC) No 2246/2002 of 16 December 2002 on the fees 
payable  to  the  Office  for  Harmonization  in  the  Internal  Market  (Trade  Marks 
and Designs) in respect of the registration of Community designs 

Hague System 

Hague System for the International Registration of Industrial Designs 

Implementing 
Regulation 

Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing 
Council Regulation (EC) No 6/2002 on Community designs 

IP 

IPR 

Intellectual property 

Intellectual property rights 

Legal Review 

“Legal review on industrial design protection in Europe”, April 2016 

Observatory 

European Observatory on Infringements of Intellectual Property Rights 

Public Consultation 

Public  consultation  “Evaluation  of  EU  legislation  on  design  protection”, 
18 December 2018 - 30 April 2019 

RCD 

Registered Community Design 

Regulation 

Council  Regulation  (EC)  No  6/2002  of  12 December 2001  on  Community 
designs 

UCD 

WIPO 

Unregistered Community Design 

World Intellectual Property Organization 

3 

 
 
1. 

INTRODUCTION 

This evaluation aims to provide an in-depth assessment of the overall functioning of the 
design protection system in the European Union including both EU and national levels. 
It analyses to what extent the current EU legislation on design protection, consisting of: 
  Directive 98/71/EC on the legal protection of designs1 (‘the Directive’),  
  Regulation (EC) 6/2002 on Community Designs2 (‘the Regulation’),  
  Regulation  (EC)  2245/2002  implementing  the  Community  Design  Regulation3 

(‘the Implementing Regulation’), and  

  Regulation  (EC)  2246/2002  on  fees  payable  to  the  European  Union  Intellectual 

Property Office (‘the Fees Regulation’)4,  

has achieved its objectives in terms of efficiency, effectiveness, relevance, coherence and 
EU added value. It also aims to assess the degree to which that legislation is still fit for 
purpose,  in  particular  given  the  pace  of  digital  transformation  and  technological 
development, including the increasing role of digital designs and 3D printing. 

The  evaluation  aims  to  provide  a  solid  evidence  base  and  show  whether:  (i)  the 
legislation  has  met  its  original  objectives;  and  (ii)  the  EU’s  design  protection  system 
needs  to  be  improved  or  updated.  On  the  basis  of  the  evaluation  results,  the  European 
Commission will decide whether and to what extent the current EU legislation on design 
protection needs to be reviewed. 

EU  Member  States  were  required  to  transpose  the  Directive  into  national  law  by 
28 October  2001.  The Regulation  entered  into  force  on  6 March 2002,  and  both 
the Implementing  Regulation  and 
into  force  on 
24 December 2002. On 1 January 2003, the European Union Intellectual Property Office 
(‘EUIPO’) started to accept applications for registered Community designs, with the first 
date of filing being granted on 1 April 2003. Because the Community design regime and 
the  national  design  protection  systems  of  the  Member  States  began  to  coexist  and 
complement each other starting on 1 April 2003, this evaluation covers the period from 
2003 up to 2019.  

the  Fees  Regulation  entered 

No  overall  evaluation  of  the  Directive  and  Regulation  has  taken  place  since  their 
adoption. The sole exception concerns their transitional provisions on design protection 
for spare parts (see Section 5.5.1), the evaluation of which was mandated by Article 18 of 
the Directive, and followed by proposing in 2004 the removal of the option for Member 
States  to  retain  such  protection  at  national  level.  However,  the  relevant  Commission 

1  Directive  98/71/EC  of  the  European  Parliament  and  of  the  Council  of  13  October  1998  on  the  legal 
protection of designs, OJ L 289, 28.10.1998, p. 28. 
2 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, OJ L 3, 5.1.2002, p. 1. 
3 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing  Council Regulation (EC) 
No 6/2002 on Community designs, OJ L 341, 17.12.2002, p. 28. 
4 Commission Regulation (EC) No 2246/2002 of 16 December 2002 on the fees payable to the Office for 
Harmonization  in  the  Internal  Market  (Trade  Marks  and  Designs)  in  respect  of  the  registration  of 
Community designs, OJ L 341, 17.12.2002, p. 54. 

4 

 
 
                                                           
proposal5  did  not  find  sufficient  support  in  the  Council  and  was  finally  withdrawn  in 
2014.  

The  Regulation  was  amended  once  in  2006  to  give  effect  to  the  EU’s  accession  to 
the Geneva  Act  of  the  Hague  Agreement  concerning  the  international  registration 
of international designs (see Section 5.6.1). 

The  evaluation  covers  all  28  countries  that  were  members  of  the  EU  in  2019, 
i.e. including the United Kingdom. 

2.  BACKGROUND TO THE INTERVENTION 

2.1.  DESCRIPTION OF THE INTERVENTION AND ITS OBJECTIVES 

The EU intervention in  the area of industrial designs aimed at  removing  barriers to  the 
free  flow  of  goods  by  creating  a  single  market  for  design  protection  in  the  EU  on  two 
levels:  by  harmonising  national  law  through  the  Directive,  and  by  creating  a  unitary 
protection title (one right covering the territory of the whole EU) through the Regulation. 
The intervention was proposed as part of the EU’s efforts to provide a solid framework 
for  industrial  property  protection,  and  followed  after  initiatives  on  patents6  and  trade 
marks7. 

The  laws  of  the  Member  States  providing  for  design  protection  at  domestic  level  were 
partially  harmonised  by  the  Directive.  The  harmonisation  concerned  key  aspects  of 
substantive design law without covering procedures. It intended to promote the internal 
market and prevent EU-wide competition being distorted by ensuring that the conditions 
for obtaining registered design rights are identical and that those rights confer upon right 
holders  equivalent  protection  in  all  Member  States.  However,  it  was  not  possible  to 
achieve agreement on the harmonisation of design protection for spare parts (see Section 
5.5).  Member  States  were  allowed  to  retain  their  existing  laws  on  whether  spare  parts 
should  benefit  from  such  protection  until  amendments  to  the  Directive  are  adopted, 
although they were only permitted to amend those laws if the purpose was to liberalise 
the spare parts market. 

In  addition,  and  as  a  complement  alongside  national  systems  providing  protection  by 
means  of  registered  national  design  rights8,  the  Regulation  established  autonomous 
unitary  protection  for  designs  in  the  form  of  the  ‘unregistered  Community  design’ 
(‘UCD’) and the ‘registered Community design’ (‘RCD’). The UCD right simply arises 
by  virtue  of  first  disclosure  without  requiring  registration.  The  RCD  is  granted  and 
administered by the EUIPO, upon one application made to the EUIPO in accordance with 
a single procedure under one law. Both RCD and UCD have a uniform effect throughout 
the EU (see Section 5.2.1).  

de 

Avant-Projet 

5 Proposal for a Directive of the European Parliament and of the Council amending Directive 98/71/EC on 
the legal protection of designs, COM(2004) 582 final. 
6 
relative 
http://aei.pitt.edu/14064/1/PATENT-FRENCH.PDF. 
7  Proposals  for  a  first  Council  Directive  to  approximate  the  laws  of  the  Member  States  relating  to  trade 
marks and for a Council Regulation on the Community trade mark, COM(80) 635 final. 
8 Within the EU28 there were 25 different national protection systems. Only the United Kingdom provided 
protection for both registered and unregistered designs.  

Convention 

Européen 

Brevets, 

droit 

des 

un 

à 

5 

 
 
 
                                                           
The main objectives of the intervention can be summarised as follows: 
 

reduce  obstacles  to  freedom  of  movement  for  design  goods  and  ensure  undistorted 
competition; 

  provide enhanced and effective legal protection for designs; 
  create  a  variable  and  balanced  protection  system  serving  the  needs  of  all  actors 

(in particular both owners and users of designs) and industry sectors; 
improve access to a simple and affordable design protection system, in particular for 
individual designers and SMEs; 
reduce transactional and litigation costs. 

 

 

The above specific objectives were meant to contribute to the achievement of the overall 
objective: promoting the contribution of individual designers and encouraging innovation 
and  development  of  new  products  and  investment  in  their  production.  The  intervention 
logic represented on the below diagram (Fig. 1) shows how the EU intervention intended 
to address these objectives. 

2.2.  BASELINE AND POINTS OF COMPARISON  

The situation before the  adoption of the Directive and Regulation  was  characterised by 
national  design  legislation  of  the  Member  States  being  widely  disparate9.  Apart  from 
very different formal requirements and procedures under which a registered design right 
could  be  obtained,  the  national  laws  differed  considerably  on  key  substantive  aspects. 
The latter included the conditions for obtaining protection, the nature and scope of rights 
conferred by the registration, and the term of protection. These large disparities made it 
very possible that a design right could exist in one Member State but not in another and 
thus impeded the free movement of goods embodying designs10. They also distorted the 
conditions  of  competition  for  companies  operating  across  the  EU,  to  the  particular 
disadvantage of small or medium-sized industries11.  

As the territorial scope of design rights was then limited to the territory of the individual 
Member  States,  design  products  could  also  be  the  subject  of  national  rights  held  by 
different  individuals.  This  made  a  division  of  the  internal  market  possible,  constituting 
an additional obstacle to the free movement of goods12. 

On the other hand, EU applicants were not able to obtain design protection extending in 
geographical  scope  beyond  the  territory  of  a  Member  State  in  a  single  application. 
The Benelux  countries  were  an  exception:  since  1975  they  formed  a  regional  area  of 
design  protection13,  which  allowed  applicants  to  have  their  designs  registered  with 
the Benelux Intellectual Property Office for the entire area as supranational right. 

9  For  details  on  the  existing  disparities  in  national  laws  see  ‘Green  Paper  on  the  Legal  Protection  of 
Industrial  Designs’,  Working  Document  of  the  Services  of  the  Commission,  III/F/5131/91-EN  (1991) 
(‘Green Paper’), p. 17 et seqq., and A. Kur and M. Levin, ‘The Design Approach revisited: background and 
meaning’,  in  A.  Kur,  M.  Levin  and  J.  Schovsbo,  ‘The  EU  design  approach’,  p.  2  and  4  et  seqq.  with 
references to in-depth studies. 
10 See the Green Paper, p. 30. 
11 See Recitals 2, 3, 9, 10 and 17 of the Directive, Recital 3 of the Regulation, and the Green Paper, p. 31.  
12 See Recital 4 of the Regulation. 
13 See Recital 2 of the Regulation and the ‘Convention Benelux en matière de dessins et modèles’ (1966). 

6 

 
 
 
                                                           
Fig. 1 – Intervention logic 

7 

 
 
 
The  Hague  System  for  the  International  Registration  of  Industrial  Designs  (‘Hague 
System’), administered by the World Intellectual Property Organization (‘WIPO’), made 
it  possible  to  obtain  at  lower  overall  costs,  through  one  application  to  WIPO,  a  design 
registration in several jurisdictions. However, at that time only half of the Member States 
were a contracting party to that system14. In addition, the use of the Hague System leads 
only to a bundle of national rights covered by the international registration. The latter can 
be  transferred  or  renewed  as  one  but  the  rights  obtained  remain  subject  to  the  relevant 
national design law in each territory15.  

In the absence of a system offering protection for the whole EU through one application 
in  accordance  with  a  single  procedure  under  one  law16,  companies  trading  beyond 
national borders and wishing to gain protection across the EU thus had no choice but to 
seek protection on a country-by-country basis. That implied a great level of complexity 
and  bureaucracy.  The  companies  were  not  only  required  to  file  numerous  individual 
applications  in  different  languages,  but  were  also  required  to  do  this  under  distinct 
domestic laws and procedures. The latter often caused considerable delay in the granting 
of the design right, not least due to complex examination of prior art carried out by some 
of  the  offices.  In  addition,  the  companies  had  to  pay,  at  different  times,  separate 
registration  and  renewal  fees  for  all  the  individual  design  rights  granted.  They  also 
usually had to contract a domestic agent for each Member State to properly deal with the 
local  specificities  and  requirements  (including  monitoring  of  the  different  durations  of 
protection). This generated very substantial additional burden and cost. Finally, the great 
variation in the level and quality of protection obtained in the Member States resulted in 
a lack of legal certainty, proving detrimental to investment17. 

Most companies interviewed for the purpose of a prospective study on the future demand 
for design registration at EU level, carried out for the EUIPO in 200218 before it started 
design  operations,  were  very  happy  with  the  introduction  of  Community  design.  Price 
and the territorial scope of protection were stated as key factors influencing companies’ 
willingness  to  opt  for  registering  their  designs  through  the  EUIPO  in  the  future19. 
The study also concluded that companies in countries that were not a contracting party to 
the Hague System, and that wished to register their designs in three or more countries in 
the EU, were most likely to go immediately to the EUIPO as an easier and less expensive 
option20. The conclusion of that study matches later views of design law practitioners that 
an RCD will usually be more cost effective than filing for national protection in three or 
more Member States21.  

Moreover, although individual industrial sectors in the EU have different needs (some of 
them  producing  large  numbers  of  designs  for  products  with  a  short  market  life  where 
protection  involving  registration  formalities  did  not  constitute  an  advantage  and  the 

1 

Nw.J. 

14 Those Member States were the Benelux countries, France, Germany, Greece, Italy, and Spain. 
15 For more details on the Hague System see Section 5.6.1.  
16 See Recitals 5 and 6 of the Regulation.  
17  Cristopher  M.  Aide,  ‘The  Community  Design:  European  Union-Wide  Protection  for  your  Design 
Portfolio’, 
35(2003), 
https://scholarycommons.law.nothwestern.edu/njtip/vol1,iss1/2,  referring  to  a  corresponding  press  release 
of the EUIPO, CP/01/02, dated 14.12.2003. 
18  ‘Prospective  Study  about  the  Design  Registration  Demand  at  a  European  Union  Level’  (Executive 
Summary), Study for the Office for Harmonisation in the Internal Market, Quota Union, 2002, p. 26. 
19 Ibidem, p. 29. 
20 Ibidem, p. 28.  
21  See  e.g.  David  Stone,  ‘European  Union  Design  Law,  A  Practitioners’  Guide’,  Second  Edition,  2016, 
p. 348. 

INTELL. 

TECH. 

PROP. 

& 

8 

 
                                                           
duration of protection was of less importance), all sectors were confined to the option of 
obtaining design protection in registered form with the same duration of protection (with 
the  exception  of  the  United  Kingdom  which  also  provided  for  shorter  protection  for 
unregistered designs)22.  

Finally, the territorial limitation of national design protection and different national rules 
on enforcement made it difficult for design owners operating at the EU level to enforce 
their rights in an efficient manner throughout the EU23.  

Conclusions 

Without the adoption of the Directive and the Regulation the legal framework on design 
protection, composed of the national laws of Member States, would likely have remained 
strongly fragmented. It would not have allowed for significant convergence, including on 
the practices of national IP offices.  

The persistence of wide disparities in Member States’ national laws, and the limitation of 
the effect of national design protection to the territory of a Member State, would not have 
allowed the creation of a single market for goods embodying designs. It would also have 
severely  distorted  competition.  Considering  the  number  and  economic  value  of  design 
applications  in  the  EU  before  and  after  the  introduction  of  the  RCD  (see  Section  3.2), 
both  the  acquisition  and  enforcement  of  design  protection  (on  a  state-by-state  basis) 
across the EU would most probably have been much more difficult, time-consuming and 
expensive for businesses (in particular for SMEs and individual designers). This  would 
have  discouraged  the  contribution  to  design  excellence  and  stifled  innovation  and  the 
development of new products as well as investment in their manufacturing.  

3. 

IMPLEMENTATION/STATE OF PLAY 

3.1.  DESCRIPTION OF THE CURRENT SITUATION  

to 

transpose 

into  national 

the  Directive 

The  Member  States  had 
law  by 
28 October 200124. Given the considerable number and importance of required changes to 
the  widely  disparate  national  design  laws  of  the  Member  States,  only  three  Member 
States  (Denmark,  France,  and  Italy)  were  able  to  meet  that  deadline.  Infringement 
proceedings  for  failure  to  notify  transposition  measures  in  time  were  opened  by  the 
Commission against 12 Member States25. Seven of those proceedings26 were referred to 
the Court of Justice of the European Union (‘CJEU’). The transposition process by all the 
Member States was completed on 1 June 200427. All new Member States have transposed 
the Directive into their national laws. 

The conformity assessments carried out by the Commission – with the help of supporting 
studies – raised very little doubt as to the transposing measures’ general compliance with 
the  provisions  of  the  Directive.  Only  one  infringement  proceeding  was  opened  against 

22 See Recitals 15 to 17, and 24 of the Regulation. 
23 See Recital 29. 
24 Article 19(1) of the Directive. 
25  Austria,  Belgium,  Finland,  Germany,  Greece,  Ireland,  Luxembourg,  Netherlands,  Portugal,  Spain, 
Sweden, and the United Kingdom. 
26  Against  Austria,  Belgium,  Germany,  Luxembourg,  Netherlands,  Portugal,  and  Spain  (see  20th  annual 
report on monitoring the application of Community law (2002), COM(2003)669 final, p. 51). 
27  Entry  into  force  of  the  last  transposition  measure  at  national  level  –  German  ‘Gesetz  zur  Reform  des 
Geschmacksmusterrechts’, BGBl. no 11, Teil 1 vom 18/3/2004, p. 39. 

9 

 
                                                           
a Member  State  (Italy)  and  referred  to  the  CJEU28.  The  generally  high  degree  of 
conformity  of  the  transposing  national  law  of  Member  States  was  also  attested  by  the 
Legal review on design protection in Europe29 (‘Legal Review’).  

The Legal Review further concluded that the implementation of the Directive was largely 
satisfactory.  However,  the  interpretation  of  certain  provisions,  in  particular  around  the 
very  kernel  of  design  protection  that  is  the  subject-matter  of  protection,  raised  some 
issues. This was due to the introduction by the Directive of several new legal terms of art, 
which courts, practitioners and users of the design system needed to deal with. Different 
interpretations of the subject-matter of protection were also  confirmed by  collaboration 
of  the  EUIPO  and  national  IP  offices  as  part  of  liaison  meetings  and  convergence 
projects (see Section 5.2.2 and Annex VI).  

The Regulation did not require national law to bring it into effect. However, it obliges30 
Member  States  to  designate  in  their  territories  a  limited  number  of  national  courts  and 
tribunals  of  first  and  second  instance  (‘Community  design  courts’)  to  perform  the 
functions  assigned  to  them  by  the  Regulation.  Member  States  were  expected  to 
communicate a list of Community design courts to the Commission by 6 March 200531. 
The Commission initiated proceedings against a number of Member States to encourage 
them to comply with those obligations. All Member States have designated such courts in 
the meantime (see Section 5.4). 

3.2.  USE OF THE DESIGN PROTECTION SYSTEM 

Why firms use or produce designs 

Design is  what  makes  a product  appealing. Visual  appeal  is  one of  the key  factors that 
influences consumers’ choices and leads them to prefer one product over another. Well-
designed products create an important competitive advantage for producers. Companies 
that invest in design tend to be more profitable and grow faster32. Design rights cover the 
appearance of a product or part of a product. To encourage innovation and the creation of 
new  product  design,  there  is  an  increasing  need  for  accessible,  modern,  effective  and 
consistent legal protection of those rights. 

According to an analysis carried out for the Organisation for Economic Co-operation and 
Development  (‘OECD’)33,  the  use  of  (a  broadly  understood)  design  as  an  integrated 
element  is  highly  correlated  with  innovation  outcomes,  particularly  product  and 
innovations.  The  percentage  of 
marketing 
innovative turnover of product-innovating firms is on average nine times higher in firms 
using design as an integrated element. 

including  new-to-market 

innovations, 

28 It concerned  non-compliance of the Italian  national law  with the principle of cumulation laid down in 
Article 17 of the Directive and providing for design rights to subsist beside copyright protection. 
29  Legal  review  on  design  protection  in  Europe,  2016,  p.  153.  It  examined  the  law  of  Austria,  Czechia, 
Denmark,  France,  Germany,  Italy,  Lithuania,  Luxembourg,  the  Netherlands,  Poland,  Portugal,  Spain, 
Slovenia, Sweden, and the United Kingdom. 
30 Article 80(1) of the Regulation. 
31 Article 80(2) of the Regulation. 
32 For research including case studies on the relationship between design, innovation and business growth 
see  e.g.  UK  Design  Council  (2015),  ‘The  Design  Economy:  The  value  of  design  to  the  UK’,  Design 
Council: UK. 
33 F. Galindo-Rueda and V. Millot (2015), ‘Measuring Design and its Role in Innovation’, OECD Science, 
Technology and Industry Working Papers, 2015/01, OECD Publishing. This paper also examines sectors 
showing the highest propensity to integrate design. 

10 

 
                                                           
The  Economic  review  of  industrial  design  in  Europe34  (‘Economic  Review’)  analysed 
why  firms  use  or  produce  designs35.  Improving  the  image  of  the  company;  increasing 
sales;  and  helping  with  the  development  of  new  products  and  services  were  the  three 
most commonly cited reasons as to why design was seen as an important part of business 
strategy.  In  response  to  a  survey36,  respondents  from  all  sectors  rated  the  ‘need  to 
differentiate  products  from  competitors’,  ‘adding  value  to  the  product’,  ‘strengthening 
product marketing’ and ‘creating a competitive niche’ as the most important reasons for 
design (Fig. 2). The survey results also indicate that, overall, design is considered to be 
a slightly  more  important  influence  on  business  success  among  respondents  from  the 
those  from 
technical  activities  sector 
professional,  scientific  and 
manufacturing firms and trade or repair firms. 

than  among 

Fig. 2 – Importance of design-related factors, by NACE category 

Source: Economic Review, p 34. 

Design-intensive industries 
In their 2019 study37 the EUIPO and the European Patent Office (‘EPO’) examined the 
contribution  of  IPR-intensive  industries  to  the  economic  performance  of  the  EU.  IPR-
intensive industries are defined as those having an above-average ownership of IPRs per 
employee,  as  compared  with  other  IPR-using  industries38.  The  study  also  looks 
specifically  at  the  contribution  of  design-intensive  industries  to  the  EU  economy. 
The top-five  design-intensive  industries  were  identified  as:  ‘Leasing  of  IP  and  similar 

34 Economic Review, 2015. 
35 Economic Review, see in particular pp. 32-35. 
36 Respondents were asked why designs are important for their businesses by indicating, on a scale of one 
to  five,  the  importance  of  several  specified  design-related  factors.  The  survey  was  addressed  at  design-
intensive  companies;  the  responses  are  broken  down  by  the  NACE  sector  in  which  respondents  operate. 
NACE is the industry standard classification system used in the EU. 
37  ‘IPR-intensive  industries  and  economic  performance  in  the  European  Union’,  EPO  and  EUIPO, 
September 2019.  
38 Ibidem, chapter 5 general methodology, p.47 methodology for identifying design-intensive industries.  

11 

 
 
                                                           
products,  except  copyrighted  works’,  ‘manufacture  of  electric  lighting  equipment’, 
‘wholesale  of  furniture,  carpets  and  lighting  equipment’,  ‘manufacture  of  cutlery’,  and 
‘manufacture of ceramic sanitary fixtures’39. 

The results of this study show that design-intensive industries play an important role in 
the  EU  economy.  The  IPR-intensive  industries  generated  29.2%  of  all  jobs  in  the  EU 
during  the  period  2014-2016  (direct  contribution),  with  14%  in  design-intensive 
industries.  This  means  that  over  30  million  Europeans  were  employed  by  design-
intensive industries in the examined period. Overall, almost 45% of EU GDP is generated 
in IPR-intensive industries, with design-intensive industries accounting for 16%. Wages 
in  IPR-intensive  industries  are  also  higher.  The  average  weekly  wage  in  IPR-intensive 
industries  is  EUR 801,  compared  with  EUR 544  in  non-IPR-intensive  industries.  This 
“wage premium” is 40% in design-intensive industries, where the average weekly wage 
is  EUR 761.  IPR-intensive  industries  also  contribute  greatly  to  EU  trade.  While  89% 
of EU goods imports consist of products of IPR-intensive industries, an even higher share 
of  EU  goods  exports  –  96%  –  is  accounted  for  by  IPR-intensive  industries,  leading  to 
a trade surplus of EUR 182 billion in IPR-intensive industries, of which almost EUR 67 
billion is generated by design-intensive industries. 

Increasing levels of Community design registrations 

Respondents  to  the  open  public  consultation  “Evaluation  of  EU  legislation  on  design 
protection”  (‘Public  Consultation’)40  were  almost  unanimous  in  praising  the  EU  design 
system for making it simple and affordable to register Community designs (see Section 
5.2.1).  This  favourable  opinion  is  reflected  in  the  demand  for  RCDs,  which  has  been 
steadily  rising  since  the  launch  of  the  Community  design  registration  system  in  2003 
(Fig. 3) to reach over 1.4 million design filings by the end of 2019 and about 4 designs 
per application on average41.  

RCD filings grew by 6.5% annually between 2003 and 2019. More than 813 000 RCDs 
were  in  force  on  1 January 2020.  These  numbers  prove  the  successful  uptake  of  the 
Community design protection system, as also recognised in the literature42.  

In  the  last  10  years,  most  of  the  direct  RCD  filings  (filings  lodged  directly  with  the 
EUIPO) continued to originate from within the EU, which had an average share of almost 
72% of total worldwide filings from 2010 to 2019. However, between 2003 and 2019 the 
EU  share  fell  steadily  while  the  United  States  and  China  consistently  increased  their 
filing shares (Fig. 4).  If we look at the top-10 direct RCD applicants and top-10 global 
direct  registration  owners,  we  see  that  half  of  the  positions  in  the  rankings  are  held  by 
non-EU enterprises43.  

39  Ibidem,  p.  62  list  of  top-20  design-intensive  industries,  p.  109  list  of  all  IPR-intensive  industries, 
including the design-intensive ones. 
40  Public  consultation  “Evaluation  of  EU  legislation  on  design  protection”,  results  available  at: 
https://ec.europa.eu/info/law/better-regulation/have-your-say/initiatives/1846-Evaluation-of-EU-
legislation-on-design-protection/public-consultation  and  summarised  in  the  Factual  Summary  Report 
(Annex IV to this Evaluation Report). 
41 EUIPO data. 
42 A. Kur, M. Levin and J. Schovsbo, ‘The EU Design Approach – a global appraisal’, 2018, p. 253. 
43 EUIPO design focus - 2010 to 2019 evolution. 

12 

 
 
 
                                                           
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Fig. 4 – Dynamic share of total direct RCD filings 

Source: EUIPO data 

A  2015  study  on  the  use  of  RCDs44  concluded  that  most  RCD  applications  were 
concentrated  in  low-tech  areas  such  as  furnishing  in  Class  6  of  the  Locarno 
Classification45,  articles  of  clothing  and  haberdashery  in  Class  2,  and  packaging  in 
Class 9.  The  latest  statistics46  also  list  Class  6  on  the  top  of  the  ranking  of  most  filed 
classes,  followed  by  Class  2.  However,  these  two  classes  are  followed  by  high-tech 
products  falling  into  Class  14,  encompassing  recording,  telecommunication  or  data 
processing equipment, which had the highest average annual growth rate among the top-
10  classes.  The  latter  is  particularly  relevant  as  Class  14  also  covers  graphical  user 
interfaces  (‘GUIs’)  and  icons  for  computers  in  sub-class  14-04.  As  analysed  in  a  2017 
study on digital design protection47, and confirmed by latest EUIPO data, RCD filings in 
that sub-class also increased significantly48, evidencing the growing importance of digital 
designs.  

The relatively high concentration of RCDs in the Locarno Classes 6 and 2 is considered 
notable49  as  they  represent  quite  different  categories  of  design  products  (fashion  items 
with a short life cycle and the much longer-lived category of furniture). This can be seen 
as confirmation that EU design legislation works for both categories of products, creating 
a  variable  and  balanced  protection  system  serving  the  needs  of  different  industry 
sectors50. Although the way in which design rights are used in the various industries can 

44  R.  Filitz,  J.  Henkel  and  B.  S.  Tether,  ‘Protecting  aesthetic  innovations?  An  exploration  of  the  use  of 
registered Community designs’, Research Policy, Vol. 44, 2015 - assessing data from 2003 to 2011. 
45  The  Locarno  Classification,  established  by  the  Locarno  Agreement  (1968),  is  an  international 
classification used to register industrial designs that is administered by the WIPO. It aims at classifying all 
known  industrial  products  into  ‘classes’,  which  are  then  further  classified  in  sub-classes.  It  is  regularly 
the  currently  valid  12th  edition  of 
is  available  online  at 
revised  and 
https://www.wipo.int/classifications/locarno/locpub/en/fr/. 
46 EUIPO design focus 2010 to 2019 evolution. 
47 R. Filitz, J. Henkel and J. Öhnemus, ‘Digital Design Protection in Europe: Law, Trends, and Emerging 
Issues’,  Discussion  Paper  17-007,  Centre  for  European  Economic  Research,  2017  –  assessing  data  from 
2003 to 2013. 
48 RCD filings in Class 14-04 increased almost nine-fold from 456 in 2004 to 3 892 in 2019.   
49  R.  Filitz,  J.  Henkel  and  B.  S.  Tether,  ‘Protecting  aesthetic  innovations?  An  exploration  of  the  use  of 
registered Community designs’, Research Policy, Vol. 44, 2015. 
50 A. Kur, M. Levin and J. Schovsbo, ‘The EU Design Approach – a global appraisal’, 2018, p. 255. 

the  Classification 

14 

020.00040.00060.00080.000100.000120.000EUUSChinaJapanOther Countries 
 
 
 
 
 
 
 
 
 
 
 
 
                                                           
differ widely  according to  the filing strategy, firms  considered EU design  legislation to 
be a “game changer”, offering relatively strong protection suitable to their needs51. 

National registrations 

The  EUIPO  reports  that  more  than  730 000  RCDs  were  in  force  on  1 January 2018. 
By comparison,  data  obtained  through  a  targeted  questionnaire  prepared  by  the 
Commission  and  addressed  to  national  Intellectual  Property  Offices  (‘the  IPO 
Questionnaire’) show that more than 300 000 designs were in force on that same date in 
France  and  Germany.  In  other  Member  States,  the  registration  numbers  were  much 
lower. For example, in the United Kingdom there were around 60 000 designs in force; in 
Spain around 30 000; in Poland and Austria around 10 000; in Croatia, Czechia, Hungary 
and Romania between 3 000 and 4 000; and in Cyprus, Estonia and Latvia less than 500.  
The  Legal  Review  thoroughly  analyses  the  national  filing  trends52.  It  refers  to  the 
increased  popularity  of  the  Community  design  system  and  to  the  EU  becoming 
a contracting party to the Hague System as the main factors impacting the filing volumes 
on  the  national  level.  Changes  in  global  volumes  of  national  filings  (Fig. 5)  show  that 
despite some fluctuations caused by these events, the overall number of national filings 
remains  significant,  balancing  around  the  threshold  of  120  000  applications  in  the  past 
10 years. 

Fig. 5 – Filing volumes of national design rights 

Source: EUIPO based on data provided by the Member States for DesignView 

Overall increase in filing numbers and in economic value represented by filings 

A comparison of the total numbers of national design applications before the start of the 
RCD  in  2003  with  the  total  numbers  of  national  and  RCD  applications  after  that  start 
shows a clear and substantial net increase (with a steady increase from  year to  year) in 
design applications overall. This trend can be observed whether we take the total number 
of applications covering only the 15 Member States that were part of the EU in 200353, or 
the  total  number  of  applications  covering  all  28  Member  States  (as  done  in  Fig.  5). 
National applications might have been substituted by RCD applications to a considerable 

51 Ibidem, p. 256. 
52 Legal Review, pp. 32-44. 
53 The EU-15 consisted of AT, BE, DK, DE, EL, ES, FI, FR, IE, IT, LU, NL, PT, SE, and the UK. 

15 

 - 20,000 40,000 60,000 80,000 100,000 120,000 140,000 160,000199920002001200220032004200520062007200820092010201120122013201420152016201720182019No. of applicationsNational (EU)Community Design 
 
                                                           
extent  after  introduction  of  the  RCD.  However,  it  must  not  be  overlooked  that  the 
resulting  RCD  registrations  represent  a  much  higher  economic  value  for  right  holders 
because of their EU-wide scope of protection. They also constitute perfect evidence for 
increasing economic activity within a better functioning internal market. All this proves 
that  the  overall  objective  of  the  EU  legislation  on  design  protection,  i.e.  to  encourage 
innovation and development of new products, has been achieved. 

3.3. 

 TECHNOLOGICAL DEVELOPMENT AND AWARENESS OF DESIGN PROTECTION 

Several unforeseen factors and unintended consequences have been identified.  

The unforeseen factors concern first and foremost technological advancement. Software-
based innovation and the growth of artificial-intelligence (‘AI’)-related technologies have 
allowed  connected  devices  with  electronic  display  screens  to  become  commonplace54. 
The  importance  of  GUIs  and  icons  in  enabling  user  interaction  with  all  types  of  such 
devices  (e.g.  smartphones,  home  appliances  and  medical  devices)  led  to  a  significant 
increase  in  digital  design  filings  as  shown  above  by  RCD  statistics  (Section  3.2).  This 
growth also  reflects  the  increasing role of such new design types as strategic assets for 
firms. The development of AI can also prove challenging in other respects, as evidenced 
by the EU submission to the WIPO public consultation on AI55.  

The  opportunities  and  challenges  brought  by  3D  printing  have  also  been  growing. 
Its impacts  on design protection were assessed in  the Economic Review,  Legal  Review 
and the study on “The intellectual property implications of the development of industrial 
3D printing” (‘3D Printing Study’)56, with their main findings summarised in this report. 
3D printing appears to be a promising technology for multiple sectors of EU industry57, 
including  for  developing  new  business  models.  For  instance,  this  is  the  case  for  the 
circular  economy,  with  3D  printing  allowing  the  local  manufacturing  of  repair  parts. 
It can also support the development of personalised manufacturing. The COVID-19 crisis 
has shown that 3D printing can represent an opportunity when there is a need to quickly 
and easily manufacture critical goods.  

Therefore,  when  assessing  the  relevance  of  the  design  acquis,  this  report  assesses  both 
the protection of designers’ rights and how the design acquis ensures (or fails to ensure) 
that full advantage of new technologies is taken. 

Other  unforeseen  factors  include  economic  factors  (such  as  the  development  of  supply 
chains and the emergence of new business models, e.g. collaborative platforms) and legal 
factors (e.g. interaction with other sets of rules), both of which can prove challenging for 
design protection.  

This  evaluation  brought  evidence  of  two  other  main  factors  that  significantly  impacted 
the functioning of the EU design protection system.  

54  Cf.  International  Chamber  of  Commerce  Report,  ‘Design  Protection  for  Graphical  User  Interfaces’, 
2018. 
55 https://www.wipo.int/export/sites/www/about-
ip/en/artificial_intelligence/call_for_comments/pdf/org_european_union.pdf.  
56 “The Intellectual property implications of the development of industrial 3D printing”, 2020. 
57 In that respect, please see the mapping exercise of the 3D Printing Study where the use of 3D printing 
has  been  assessed  in  the  following  key  sectors:  healthcare,  aerospace,  industrial,  automotive,  consumer 
products, energy and construction. 

16 

 
                                                           
Firstly, the failure of the Commission’s proposal to harmonise protection rules for visible 
spare  parts  maintained  segmentation  of  the  internal  market.  This  issue  is  addressed  in 
Section 5.5. 

Secondly, insufficient awareness of the advantages of obtaining design protection led to 
potential underuse of the design protection system. 

According to the Economic Review, many companies, in particular SMEs, are not aware 
of industrial designs and how they can help their business. Trade associations often lack 
knowledge of the design protection systems and are not able to provide support to their 
member firms  on such issues. The Review recommends establishing a best  practice for 
the  benefit  of  small  businesses  and  start-ups  to  promote  knowledge  on  design 
protection58. 

Almost  two  thirds  of  the  respondents  to  the  Public  Consultation  agreed  that  there  is 
insufficient awareness of the availability, benefits and methods of protecting designs in 
the  EU.  Respondents  agreed  that  this  problem  affects  young  designers  and  SMEs  in 
particular. Some respondents indicated that the fashion and clothing industry was a sector 
where  low  awareness  of  design  protection  benefits  can  have  particularly  detrimental 
effects.  Respondents  also  indicated  that  future  awareness-raising  activities  should  not 
only  focus  on  explaining  the  benefits  of  design  protection,  but  also  seek  to  clarify  the 
differences  between  design  rights  and  other  IP  rights,  in  particular  trade  marks  and 
copyright. 

Increased efforts to raise awareness and promote the use of designs were also among the 
recommendations presented by the European Design Leadership Board59. 

Numerous awareness-raising activities and campaigns are already being carried out, both 
by  the  EUIPO  (most  notably  the  DesignEuropa  Awards60)  and  national  IP  offices. 
The EUIPO is supported in this work by the European Observatory on Infringements of 
Intellectual  Property  Rights  (‘the  Observatory’)  and  its  public  awareness  working 
group61.  Some  of  the  activities  target  SMEs  in  particular;  e.g.  the  EUIPO’s  Academy 
provides  an  SME  learning  area62.  Moreover,  the  EU  IP  Helpdesk  offers  many  training 
courses and materials to help European creators and innovators make the most of their IP 
assets, including designs63. 

58 See Economic Review, p. 9 and 89. 
59  ‘Design  for  Growth  &  Prosperity’  Report  and  Recommendations  of  the  European  Design  Leadership 
Board, 2012. 
60  DesignEuropa  Awards  celebrate  excellence  in  design  and  design  management  among  Registered 
Community  Design  (RCD)  holders.  Organised  every  2  years  by  the  EUIPO,  the  awards  have  two 
categories  open  for  applications  and  nominations:  (i)  small  and  emerging  companies;  and  (ii)  industry. 
The lifetime-achievement  category  is  reserved  for  designers  with  a  significant  body  of  work,  developed 
over the course of a career, who have had a significant impact on the design profession. More information: 
https://euipo.europa.eu/ohimportal/pl/dea-home. 
61 One of the main objectives of the European Observatory on Infringements of Intellectual Property Rights 
is  to  design  campaigns  to  raise  awareness  of  the  value  of  IP  and  the  negative  consequences  of  IP 
infringement (for more information see: https://euipo.europa.eu/ohimportal/en/web/observatory/about-us#). 
The  Observatory  provides  a  repository  of  awareness-raising  materials  produced  by  its  stakeholders  and 
partners  over 
https://euipo.europa.eu/ohimportal/en/web/observatory/public-awareness-
campaigns. 
62 https://euipo.europa.eu/knowledge/mod/page/view.php?id=78779  
63 http://www.iprhelpdesk.eu/. 

years: 

the 

17 

 
 
                                                           
4.  METHOD 

4.1.  SHORT DESCRIPTION OF METHODOLOGY 

The evaluation of the EU design protection system was launched in 2014, and involved 
wide  groups  of  stakeholders  in  the  EU.  This  report  is  based  on  various  sources  of 
information,  most  importantly  on  two  external  studies  –  the  Economic  Review  and  the 
Legal  Review,  which  both  relied  on  quantitative  and  qualitative  assessment  (see 
Annex III  for  details).  It  also  accounts  for  the  results  of  the  3D  Printing  Study. 
In addition,  the  report  draws  from  collaborative  efforts  of  the  EUIPO  and  national  IP 
offices in the framework of liaison meetings and convergence projects (see overview in 
Annex  VI).  This  report  also  draws  on  many  other  studies  and  reports  prepared  by  the 
EUIPO64 and the Observatory65, and other available studies and data collections prepared 
by national or international public authorities, including in particular national IP offices, 
academics  or  other  stakeholders.  It  also  takes  into  account  feedback  received  from  the 
stakeholders on the Evaluation Roadmap66, and in the course of the Public Consultation, 
bilateral meetings and public conferences. Several discussions have also taken place with 
Member  States  representatives  in  the  Commission  Expert  Group  on  Industrial  Property 
Policy67. 

4.2.  LIMITATIONS AND ROBUSTNESS OF FINDINGS 

Although  the  evaluation  was  carried  out  during  a  significant  timespan  (over  5  years68), 
allowing for thorough  analysis and wide involvement of all the interested stakeholders, 
gathering data on some aspects of the functioning of EU legislation on design protection 
proved  difficult.  This  is  due  to  the  different  protection  tools  (see  overview  in  Section 
5.2.1)  and  the  two-tier  system  (EU  and  national).  There  is  also  significantly  less 
empirical evidence on the economic effects of design rights than for other IPRs69. Lack of 
monitoring arrangements in the Directive and Regulation made it particularly difficult to 
detect  clear  causal  links  between  the  intervention’s  impact  and  the  evolving  reality  of 
design protection in the EU.  

These limitations occurred in particular when comparing the baseline situation with the 
current  one.  Since  it  was  impossible  to  carry  out  a  reliable  estimation  of  costs  and 
duration of national proceedings before harmonisation, this report focuses on qualitative 
data,  in  particular  feedback  received  from  stakeholders  both  recently  and  in  the 
preparatory period preceding adoption of the EU legislation on design protection. 

In relation to the assessment of costs of the functioning of the EU protection system for 
designs  (see  also  Annex  V),  the  report  was  only  able  to  focus  on  analysing  fixed 
administrative  fees.  Costs  of  legal  or  other  professional  assistance,  both  for  obtaining 
design  protection  (preparation  of  the  application  strategy,  assisting  in  the  registration 
process)  and  enforcing  it  (negotiations,  representation  in  judicial  or  administrative 
proceedings)  vary  significantly,  depending  on  the  case  at  hand  and  preference  of  the 

64 https://euipo.europa.eu/ohimportal/en/publications  
65 https://euipo.europa.eu/ohimportal/pl/web/observatory/observatory-publications  
66 https://ec.europa.eu/info/law/better-regulation/have-your-say/initiatives/1846-Evaluation-of-EU-
legislation-on-design-protection  
67 https://ec.europa.eu/transparency/regexpert/index.cfm?do=groupDetail.groupDetail&groupID=3434  
68  Delay  in  carrying  out  this  evaluation  was  mostly  due  to  other  political  priorities,  including  the 
finalisation of the trade mark reform. 
69 Cf. e.g. I. Hargreaves, ‘Digital Opportunity: A Review of Intellectual Property and Growth’, 2011, p. 17. 

18 

 
                                                           
applicant/right  holder. These costs cannot  thus  be estimated and compared in  a reliable 
manner. 

Another significant limitation was the availability of data on case-law (e.g. volumes and 
characteristics  of  cases  lodged  over  time),  both  with  regards  to  cases  heard  by  the 
Community design courts and other national courts70. 

Mitigating measures were taken to compensate for the lack of quantitative data through 
increased  inputs  from  interviews  with  stakeholders  and  the  network  of  legal  experts  in 
the Member States, who contributed to the analysis. 

Finally, there were some concerns on the methodology used in the Legal Review in terms 
of  the  selection  of  the  Member  States  taking  part  and  the  stakeholder  surveys  and 
interviews which contributed to it. These concerns were raised in legal literature71.  

5.  ANALYSIS  

5.1.  OVERALL FUNCTIONING OF THE EU SYSTEM FOR DESIGN PROTECTION 

5.1.1.  General feedback on the functioning of the EU system for design protection 

The  Legal  Review  concludes  that  the  harmonisation  of  design  protection  through 
the Directive and the establishment of a complementary unitary system by the Regulation 
have been largely successful in creating an internal market for goods embodying designs, 
by  removing  many  divergences  hitherto  present  among  national  design  systems. 
The Review points out that, compared with the situation prior to these two instruments, it 
is  now  cheaper  and  easier  to  obtain  design  protection  across  the  EU  (see  Section  2.2). 
The  greater  harmonisation  of  the  level  of  protection,  and  the  lower  cost  of  obtaining 
protection, are positive factors in the creation of a system which encourages innovation, 
product development and investment in manufacturing. The Legal Review also indicates 
that there are clear benefits to be drawn from the pan-EU registration system, especially 
in terms of cheaper registration (usually) and administration costs; less delay than multi-
jurisdictional applications; and overwhelming filing/grant success rate (see Fig. 4 and 5). 
However,  the  Review  also  points  to  several  remaining  challenges  that  need  to be 
addressed72. 

Although the Economic Review confirms that the design definition is the same across the 
EU, it points to procedural differences, and proposes eight further actions that could be 
considered to improve the design protection system73. The Economic Review also looked 
at  the  degree  of  satisfaction  with  the  functioning  of  the  EU  design  protection  system. 
The respondents  to  the  survey  conducted  as  part  of  this  Review  had  higher  satisfaction 
levels for national protection than EU protection. The latter result is likely influenced by 
companies  that  are  dissatisfied  with  the  rules  on  protection  of  visible  spare  parts  in 
the EU74.  

70 Similar difficulties were encountered when assessing the functioning of the Directive 2004/48/EC on the 
enforcement of intellectual property rights; see Evaluation Report SWD(2017) 431, p. 7. 
71 H. Hartwig ‘The ‘Legal Review on Industrial Design Protection in Europe’: A closer look’, Journal of 
Intellectual Property Law & Practice, Volume 13, Issue 4, April 2018, p. 332–336. 
72 Legal Review, p. 153 et seqq. 
73 Economic Review, pp. 167, 170-172. 
74 Economic Review, pp. 164 -166. 

19 

 
                                                           
Most respondents to the Public Consultation considered that the design protection system 
in the EU works well or very well. Representatives of authorities, researchers and owners 
of  designs  were  most  positive  about  the  functioning  of  the  design  protection  system  in 
the EU, with roughly 90% positive answers. A vast majority of SMEs and advisers also 
considered  that  the  system  is  functioning  very  well  or  rather  well.  On  the  other  hand, 
users  of  designs  of  others  were  split  on  the  issue,  while  a  slight  majority  of  other 
respondents considered that the system is not functioning well75.  

The respondents particularly appreciated the predictability, speed and cost effectiveness 
of  the  EU  protection  systems  for  designs.  They  also  appreciated  the  high  degree  of 
harmonisation and useful complementarity between the national and unitary titles. On the 
negative side, the respondents pointed to the remaining harmonisation gaps (e.g. rules on 
spare parts protection) and need for improvements and modernisation of these protection 
systems.  A  few  respondents  believed  there  is  lack  of  legal  certainty  resulting  from  the 
lack of substantive examination of design applications (see Section 5.3.3). 

5.1.2.  General feedback on the achievement of the EU intervention’s objectives  
In the context  of the Public Consultation76, all the objectives of the EU designs system 
were seen as important by a vast majority of all categories of stakeholders (roughly 90% 
of  answers  were  of  this  view).  Among  other  objectives  that  should  be  pursued,  the 
respondents  indicated  the  need  for  further  harmonisation,  in  particular  in  relation  to: 
(i) spare  parts  protection;  (ii)  improving  cooperation  between  public  authorities  to  stop 
imports of counterfeit  goods; (iii) abuse prevention; and (iv) preventing  the creation of 
product monopolies. 

Respondents  were  almost  unanimous  in  praising  the  EU  design  system  for  making  it 
simple  and  affordable  to  register  Community  designs.  They  considered  that  the  system 
helped in promoting innovation and is accessible to SMEs and individual designers. They 
also  considered  that  it  helps  in  preventing  counterfeiting  and  they  appreciated  the 
simplified enforcement of the UCD. Most groups of respondents thought that the system 
provides  uniform  protection  everywhere  in  the  EU  and  allows  for  free  circulation  of 
products in the internal market.  

Users  of  the  designs  of  others  considered  that  the  system  helps  to  acknowledge  and 
protect  the  marketing  value  of  a  design,  and  fosters  innovation  through  competition  by 
encouraging  the  creation  of  new  designs.  They  also  agreed  that  the  system  allows  the 
design right owner to receive a fair return on their design investment. On the other hand, 
they indicated that at times it may be difficult and/or costly to find out if a specific design 
is protected, leading to uncertainty on what actions are permitted. 

5.2.  PROTECTION TOOLS 

5.2.1.  Different ways of protecting designs 

Different design rights 

As  explained  in  Sections  2.1  and  2.2,  EU  legislation  on  design  protection  created  the 
possibility for designers to rely on either registered or unregistered protection. In order to 
protect their designs in the EU they can opt for the following protection titles:  

75 Factual summary report. p. 3. 
76 Factual summary report, p.3-4. 

20 

 
                                                           
  a  registered  Community  design  (RCD),  a  design  right  registered  with  the  EUIPO, 
providing  uniform  protection  valid  in  the  entire  EU  (unitary  title),  for  a  period  of  5 
years (renewable up to 25 years); 

  a  national  registered  design,  a  design  right  registered  with  a  national  IP  office, 
providing  valid  protection  in  one  Member  State  (with  the  exception  of  the  Benelux 
countries,  where  a  design  right  registered  with  the  Benelux  Office  for  IP  will  cover 
three Member States: Belgium, Luxembourg and the Netherlands), for a period of at 
least 5 years (renewable up to 25 years); 

  an  unregistered  Community  design  (UCD),  a  right  protecting  a  design  if  made 
available  to  the  public,  without  the  need  for  registration;  it  provides  uniform 
protection valid in the entire EU (unitary title), for a period of 3 years. 

Although  the  Directive  allows  Member  States  to  protect  unregistered  designs  through 
national  titles,  the  United  Kingdom  was  so  far  the  only  Member  State  that  offered  this 
type of protection77. 

For  an  RCD,  designers  can  choose  between  filing  an  application  directly  with  the 
EUIPO, or with their national office78, which transfers it for examination to the EUIPO. 
For  national  registered  design  rights,  designers  need  to  file  their  application  with  the 
respective national office (including the regional Benelux Office for IP). Designers can 
also use the Hague system to obtain protection in multiple territories, including in some 
individual  EU  Member  States  and/or  the  whole  EU  (see  also  Sections  2.2  and  5.6.1). 
Various  aspects  of  registration  procedures  for  Community  and  national  designs  are 
examined in Section 5.3.  

Factors influencing the choice between different rights and registration strategies 

Under  the  current  design  framework,  designers  can  choose  between  Community  or 
national protection, and between a registered or unregistered design right. They may also 
opt for a combination of these protection modes depending on their priorities. They can 
also  follow  different  filing  strategies  (national,  regional  or  international  registration 
procedures).  

According to the Public Consultation, relying on an RCD to protect one’s design is the 
most  popular  option,  followed  by  national  designs  and  obtaining  protection  via 
international  registration79.  Many  factors  can  play  a  role  when  deciding  the  type(s)  of 
registration. 

The  most  relevant  factor  appears  to  be  territorial  coverage.  The  type  of  protection 
sought will depend on the territory in which the applicant wants to operate. This surely 
plays an important role in the success of the RCD80, with many companies operating in 

77 See Article 16 of the Directive and Legal Review, p. 117. So far, none of the current Member States has 
introduced protection for unregistered design rights at national level. 
78 Like the situation with EU trade mark applications before the recent reform, the use of the option to file 
an RCD application through a national IP office has significantly decreased over time to become negligible 
–  from  2 425  applications  in  2003  to  only  21  applications  in  2019  (EUIPO  data).  In  line  with  the  trade 
mark reform this filing option should therefore be removed (see also Section 5.7). 
79  71%  of  respondents  creating  or  owning  designs  register  their  designs  as  RCDs  with  the  EUIPO, 
compared  to  58%  and  49%  for  national  registrations  and  international  registrations  respectively  (Factual 
summary report, question 18). 
80 According to the Public Consultation, 62% of the respondents creating or owning designs considered this 
as a reason to opt for an RCD, compared with 44% for national designs and 55% for international designs 
(Factual summary report, questions 21-22). 

21 

 
                                                           
several  Member  States.  International  registrations  can  also  be  justified  by  the  need  to 
cover  territories  outside  the  EU81.  However,  when  companies  want  to  focus  on  the 
domestic  market,  national  designs  appear  more  appropriate.  This  does  not  necessarily 
mean  that  SMEs  preferably  rely  on  national  designs.  Figures  from  the  Public 
Consultation show that SMEs rely first on RCDs (62% of SME respondents) and then on 
national designs (54% of SME respondents). However, it appears from the Legal Review 
that  SMEs  are  indeed  more  likely  to  rely  on  national  designs  than  bigger  companies 
(36% of companies with between 10 to 24 employees use national designs against 3% of 
companies with more than 500 employees). The national design system therefore remains 
attractive,  particularly  for  smaller  local  companies,  which  are  more  likely  to  prefer 
registration with their “home” national office.  It also appears that a range of options as 
regards  the  types  of  registration  is  used  by  SMEs.  This  range  of  options  thus  appears 
effective and relevant for SMEs and a good tool allowing them to tailor their IP strategy 
depending on their specific needs. 

The  territorial  coverage  is  closely  linked  to  the  level  of  fees,  which  appears  to  be  the 
second most important criterion (see Section 5.3.6). Here again, the attractiveness of the 
RCD  seems  to  derive  from  its  relatively  low  fees82,  correlated  with  its  wide  territorial 
coverage.  Although  less  determinant,  factors  such  as  an  easy  procedure  and  speed  of 
the procedure also play a role83. 

Factors influencing the decision to opt for design protection 
According  to  the  survey  of  the  Economic  Review84  and  the  Public  Consultation85  the 
most  significant  factor  in  opting  for  design  protection,  irrespective  of  the  method  of 
protection, is the level of protection obtained.  

Key benefits of obtaining design protection identified in the Public Consultation include: 
(i) the right to prevent others from using a design; (ii) the legal certainty as regards the 
disclosure and ownership of a design; (iii) the value brought to the product and the brand; 
and (iv) the  return on investment86. The most significant  costs  relate to  the registration 
and renewal process (see Section 5.3.6), the litigation costs (see Section 5.4) and costs to 
prepare registration.  

81  According  to  the  Public  Consultation,  the  main  reason  for  creators  or  owners  of  designs  to  register 
designs internationally lies in the territorial coverage (notably to cover Switzerland and Norway) and the 
fact that it best suits  their  needs (55%). Other reasons, invoked by a  third of the respondents creating or 
owning  designs,  include  the  lower  fees  (e.g.  the  fact  that  an  international  application  covering  multiple 
designs  can  be  more  cost-effective  than  multiple  design  applications)  and  easy  procedures.  See  Factual 
summary report, question 22. 
82 According to the Public Consultation, 44% of the respondents creating or owning designs considered this 
as  a  reason  to  opt  for  an  RCD,  against  32%  for  international  registrations,  and  only  27%  for  national 
designs (Factual summary report, questions 21-22). 
83  The  easy  procedure  is  quoted  as  a  reason  by  53%  (RCD),  32%  (international  registration)  and  22% 
(national designs) of the respondents to the Public Consultation; speediness of the procedure is quoted by 
respectively 29%, 10% and 11% (Factual summary report, questions 21-22). The Economic Review (p. 93) 
highlights the possibility to register an RCD in just two working days, which is important for companies 
needing immediate protection.  
84 Economic Review, pp. 105-107. 
85  Factual  summary  report,  questions  24-26.  With  respect  to  RCD,  respondents  creating  and  owning 
designs  considered  provision  of  a  unique  title,  the  corresponding  increased  legal  certainty,  and  the 
simplified registration process as key factors. 
86  With  respectively  88%,  58%,  25%  and  23%  of  respondents  creating  or  owning  designs  choosing  for 
these benefits (Factual summary report, questions 24-25). 

22 

 
                                                           
In  general,  the  benefits  of  design  protection  are  seen  as  outweighing  its  costs. 
Considering  the  results  of  the  Public  Consultation87,  this  is  particularly  the  case  for 
Community  designs  (for  UCD  (95%)  and  RCD  (93%))  and  international  registrations 
(80%). However, opinions remain divided (50%) as regards national designs.  

Finally,  it  is  not  uncommon  to  rely  on  other  IPRs,  such  as  trade  marks,  patents  or 
copyright88, to  protect  designs. Other  IPRs  can be  used in  addition  to  – or  instead of  – 
design protection. Factors such as awareness, the term of protection89 or costs90 can play 
a role in  that respect.  Respondents  to  the Public Consultation  who do not actively seek 
protection and those who rely on unregistered protection were asked about their reasons 
for not registering a design91. Among the main reasons, they indicated that: (i) protection 
by UCD or other IPRs (e.g. trade marks or copyright) was sufficient for their needs; (ii) 
registration of a design is too expensive; or (iii) enforcing a design right is too complex 
and/or expensive (see Section 5.4).  

Some  designers  also  opt  not  to  obtain  design  protection,  as  they  consider  that  in  their 
specific  case  such  protection  will  not  bring  sufficient  added  value,  e.g.  because  of  the 
business model of the company, the characteristics of the product (e.g. a very-short-life-
cycle product) and the characteristics of the market within which the company operates92.  

Opting for unregistered Community design 

The rights conferred by the UCD are  limited compared to those bestowed by the RCD. 
The UCD confers on its holder the exclusive right to use it and prevent any third party 
without  the  holder’s  consent  from  using  it,  but  only  if  the  contested  use  results  from 
copying the protected design (Article 19(1) and (2) of the Regulation)93. 

The Economic Review reported that 8% of respondents who replied to the survey were 
relying on protection offered by the UCD94. The Review also looked at factors that could 
discourage the use of registered design protection in favour of UCD protection. The most 
important  factors  were  the  avoidance  of  fees,  administrative  burdens,  and  the 
complicated nature of the registered protection process95. Similar feedback was received 
through the Public Consultation: respondents creating or owning designs considered the 
lack of any formalities as the chief reason for choosing UCD protection96.  

Most respondents to the Public Consultation considered that the UCD provides a useful 
legal protection against unauthorised copying. Respondents described it as an attractive 
tool for protecting short-cycle or seasonal products, and thus particularly useful in some 
specific  industry  sectors  (e.g.  fashion,  textiles  and  clothing,  eyewear,  furniture  and 

87 Factual summary report, question 26. 
88 Economic Review, p. 38. For a practical example, see the case study regarding the Lego brick, p. 45. 
89 Trade marks can be renewed without limitation. Copyright has a longer term of protection than designs, 
it runs for the life of the author and for 70 years after his death. 
90  Copyright  does  not  require  registration  to  be  protected,  thus  there  are  no  specific  registration  costs  to 
bear.  As  regards  trade  marks,  the  Economic  Review  has  shown  however  that  design  applications  are 
usually less expensive than trade mark applications – see pp. 91-93. 
91 Factual summary report, question 23. 
92 Economic Review, p. 90. 
93  The  requirement  of  copying  does  not  narrow  the  scope  of  protection  of  the  UCD.  As  provided  in 
Article 10 of the Regulation, the scope of protection of the UCD is the same as that of the RCD.  
94 Economic Review, p. 17. 
95 Economic Review, p. 104. 
96 Factual summary report, question 19. 

23 

 
                                                           
furnishing).  The  lack  of  formalities  and  registration  costs  also  seem  to  make  UCD 
generally attractive for SMEs and young designers.  

Conclusions 

EU  legislation  for  design  protection  has  proven  to  be  effective  in  providing 
an appropriate range of relevant and coherent protection tools. It appears well-suited to 
serve  the  needs  of  the  various  types  of  companies  and  design  industries  by  offering 
tailor-made  protection.  The  possibility  to  choose  between  protection  at  national, 
international  or  Union  level,  and  as  to  the  latter  between  protection  in  registered  or 
unregistered  form,  or  to  seek  for  a  combination  of  protection  means,  reflects  that  well. 
Finally,  the  success  of  the  RCD,  and  the  fact  that  the  variety  of  protection  methods 
allows designers to develop a tailor-made IP strategy, contribute to the EU added value 
of the design acquis. 

5.2.2.  Protection requirements and scope of protection  

Definitions of ‘design’ and ‘product’ 

The Directive and the Regulation97 introduced definitions of ‘design’ and ‘product’ which 
are  key  for  determining  the  subject-matter  of  design  protection.  A  design  refers  to  the 
appearance of a product resulting from certain features. A product is to be understood as 
any industrial or handicraft item. 

As indicated in Section 3.1, the Legal Review pointed to certain confusion in relation to 
the  definition  of  the  subject-matter  of  protection,  involving  the  potential  of  negatively 
influencing the accessibility of the design protection systems98.   

Most respondents to the Public Consultation99 considered the existing design and product 
definitions  clear  or  very  clear.  However,  in  the  light  of  the  growing  role  of  digital 
designs100  several  respondents  saw  in  particular  a  need  to  clarify  that  virtual  designs, 
animated  designs  and  graphical  user  interfaces  are  covered  by  those  definitions. 
The issue  of  digital  designs  raises  the  question  whether  they  can  be  understood  as 
products  and  also  whether  their  elements  are  covered  by  the  design  notion  (e.g.  is 
animation a feature?).  

Collaboration  of  the  EUIPO  and  national  IP  offices  showed  that,  for  various  types  of 
designs,  the  subject-matter  of  protection  is  either  not  clear  or  interpreted  differently  in 
different Member States. Divergent practices were noted for designs consisting of more 
than  one  item  (a  set  of  articles)  and  designs  in  different  states101.  There  were  also 
divergent practices when it came to interpreting the meaning of ‘get up’ within the notion 
of  product,  and  the  availability  of  design  protection  for  interior  design  (e.g.  can  the 
interior  of  a  shop  be  protected  as  a  design?).  Some  Member  States  consider  interior 

97 Article 1(a) and (b) of the Directive and Article 3(a) and (b) of the Regulation.  
98 Legal Review p. 12, and pp. 57-60. 
99 Factual summary report, question 39 (addressed to those respondents who identified themselves i.a. as 
advisors, authorities and researchers). 
100 See also ID5 Study of practices on protection of new technological designs (http://id-five.org/study-of-
practices-on-protection-of-new-technological-designs); WIPO SCT41/2 Compilation of the Returns to the 
Second Questionnaire on Graphical User Interface (GUI), Icon and Typeface/Type font Designs.   
101  2016  Liaison  Meeting  workshop  on  set  of  articles  and  designs  with  interchangeable  parts;  ECP4 
convergence analysis project, whereby 19 Member States grant design protection to sets of articles. 

24 

 
                                                           
design as a kind of get up102. The issue of interior design concerns the interface with other 
forms of IP protection and is further addressed in Section 5.2.7. 

Clarity  and  the  extent  to  which  the  subject-matter  of  protection  is  future-proof  are  of 
crucial  importance  for  the  accessibility  of  the  EU  design  protection  system  and  for 
encouraging  innovation  and  the  development  of  new  products.  The  potential  for 
improving  and  modernising  the  acquis  in  that  regard  requires  thorough  consideration. 
One  option  to  be  explored  in  that  context  could  be  to  provide  a  more  systematic 
categorisation of eligible design types, together with tailored representation requirements 
(see Section 5.3.1), similar to what was done for trade marks in the recent reform.  

Definition of ‘complex product’ and visibility requirement for component parts 

A  ‘complex  product’  is  defined  as  a  product  that  is  composed  of  multiple  replaceable 
components permitting its disassembly and re-assembly103. To be protected, the design of 
a  ‘component  part’  of  the  complex  product  must  be  ‘visible’  while  the  product  is  in 
normal use104. 

The  Legal  Review105  suggested  that  the  complex  product  definition  (together  with 
component  parts)  be  retained  in  order  to  deal  with  the  spare  parts  market.  However, 
because of indications of confusion reflected in some court decisions rendered at national 
level106,  the  Legal  Review  proposes  that  this  definition  should  be  restricted  to  complex 
machinery.  Such  an  approach  was  also  supported  by  some  stakeholders  in  the  Public 
Consultation.  

The Legal Review also opted for clarifying the extent of the requirement for designs to 
be  ‘visible’  (‘visibility  requirement’).  It  recommends  that  the  relevant  EU  law  should 
reflect  the  general  visibility  doctrine  as  developed  in  the  Biscuits  Poult  case107. 
In particular,  the  Legal  Review  recommends  that  the  definition  of  a  ‘design’  should 
signify  that  all  designs  should  be  ‘visible’  in  order  to  be  protected,  and  that  the 
assessment  of  such  visibility  should  be  done  from  the  perspective  of  an  ‘informed 
user’108.  

Although most respondents to the Public Consultation believed that the requirements for 
design  protection  were  clear  or  very  clear,  many  believed  the  opposite109.  In particular, 
many  respondents  called  for  clarification  of  the  applicability  and  assessment  of  the 
visibility requirement. While some respondents believed that a legal definition should be 
introduced,  others  opted  for  clarification  through  a  guidance  document  or  further  case-
law, or called for removing the visibility requirement altogether. Some of them strongly 
criticised the Legal Review for favouring the extension of the special component parts’ 
visibility  requirement  into  a  general  requirement  for  designs  relating  to  other  types  of 
products. Such an extension would indeed increase hurdles for design protection without 
justification and be contrary to the interests of designers, the design industry and design 
holders.  

102 Discussions held in liaison meetings in 2008, 2009 and 2010. 
103 Article 1(c) of the Directive and Article 3(c) of the Regulation. 
104 Article 3(3)(a) of the Directive and Article 4(2)(a) of the Regulation. 
105 Legal Review, p. 159. 
106 Ibidem, p. 74.  
107 Judgment of the General Court, 9.9.2014, Biscuits Poult v. OHIM, T-494/12, ECLI:EU:T:2014:757. 
108 Legal Review, pp. 73-77. 
109 Factual summary report, question 39 (addressed to those respondents who identified themselves i.a. as 
advisors, authorities and researchers). 

25 

 
                                                           
The current rules seem to be appropriate and coherent. A design or a design feature does 
not  need  to  be  visible  at  any  point  in  time  or  in  a  certain  situation  in  order  to  attract 
design protection. The only exception concerns component parts which have to be visible 
while  in  normal  use  to  be  protected.  This  issue  is  not  to  be  confused  with  the 
fundamental  principle  governing  the  subject-matter  of  design  protection  whereby  only 
design  features  which  are  disclosed  by  way  of  design  representations  can  enjoy 
protection110.     

The  concepts  of  ‘informed  user’,  ‘overall  impression’,  ‘design  freedom  of  the 
designer’, and ‘individual character’  

RCDs,  UCDs,  and  national  registered  designs  are  protected  to  the  extent  that  they  are 
new and have individual character. Three concepts were introduced to assess whether a 
design  has  the  required  ‘individual  character’.  These  are  the  concepts  of  the  ‘informed 
user’, the ‘overall impression’ and the ‘design freedom of the designer’111. The flipside of 
the  individual  character  test  is  used  to  assess  the  scope  of  protection  of  designs112,  and 
thus infringement. 

According  to  the  Legal  Review,  there  are  no  major  problems  with  the  individual 
character test and the concept of informed user, taking account of the case-law rendered 
at  EU  and  national  level.  However,  the  Legal  Review  points  to  some  confusion  in 
interpretation observed in relation to the role of the product nature and industry sector in 
determining the individual character113, and opts for clarifying in the law that the product 
nature and sector is to be considered114.   

The  number  of  respondents  to  the  Public  Consultation  who  believed  that  the  scope  of 
design protection is not clear or very unclear was higher than those considering it clear or 
very clear115. Some respondents  indicated in  particular that the notions used to  describe 
the scope of protection are very abstract and thus hard to clarify, with their interpretation 
depending very much on the product category. Some respondents explained that it is not 
predictable  if  a  new  design  has  individual  character,  especially  if  it  consists  of  a  new 
version of a previously existent design. On the other hand, some respondents disagreed 
with the Legal Review that changes of the legislation are needed at this stage and claimed 
that CJEU case-law should be allowed to develop further.   

While the CJEU has provided some important guidance on the concept of an ‘informed 
user’ (for example in  the  Grupo Promer Mon Graphic v. OHIM  – PepsiCo case116 and 
the  PepsiCo  v.  Grupo  Promer  case117),  the  respondents  to  the  Public  Consultation  still 
believed that providing further clarification could be of help.  

110 See Recital 11 of the Directive. 
111 Article 5 of the Directive and Article 6 of the Regulation. 
112 Article 9 of the Directive and Article 10 of the Regulation. 
113 See Recital 13 of the Directive and Recital 14 of the Regulation. 
114 Legal Review, pp. 63-71. 
115 Factual summary report, question 39 (addressed to those respondents who identified themselves i.a. as 
advisors, authorities and researchers). 
116 Judgment of the General Court, 18.3.2010,  Grupo Promer Mon Graphic v. OHIM  – PepsiCo, T-9/07, 
ECLI:EU:T:2010:96. An informed user is not a manufacturer or seller of products in which the design is 
incorporated. 
117  Judgment  of  the  Court,  20.10.2011,  PepsiCo  v.  Grupo  Promer,  C-281/10P,  ECLI:EU:C:2011:679, 
points 53-59. 

26 

 
                                                           
According  to  recent  research118,  in  relation  to  the  concepts  of  individual  character  and 
infringement, national courts transitioned to the new EU design law well and coherently. 
With the help of CJEU case-law, over time, those national courts which did not apply the 
law  well  finally  improved  and  began  to  apply  it  correctly.  However,  coherence  in  this 
area  of  EU  design  law  is  still  not  fully  achieved.  There  are  a  few  courts  that  are  still 
misapplying  the  law.  The  authors  suggest  that  the  EU  courts’  case-law  be  codified,  or 
that  guidelines  be  issued  to  clarify  that  risk  of  confusion  is  not  the  test  and  that  the 
informed user is not the average consumer but a unique, fictitious person. 

Designs dictated by their technical function  

Design  rights  do  not  give  protection  to  designs  dictated  by  their  technical  function119, 
designs of interconnections120, and designs contrary to public order or morality121.  
Despite the guidance provided by the CJEU in the Doceram case122 regarding the notion 
of ‘technical function’, the respondents to the Public Consultation would like to see some 
more  clarification  that  would  ensure,  in  particular,  that  this  notion  is  construed  more 
narrowly. 

No product-specific protection 

As confirmed by the CJEU123, the scope of protection of a Community design extends to 
designs  of  other  product  categories,  because  neither  Article  10  nor  Article  19  of  the 
Regulation, like Articles 9 and 12 of the Directive, limits protection to a specific product 
sector.  Community  design  protection  therefore  extends  to  ‘any  design’  which  does  not 
produce  on  the  informed  user  a  different  overall  impression.  This  is  also  confirmed  by 
the  explicit  provision  contained  in  Article  36(6)  of  the  Regulation,  according  to  which 
the product indication must not affect the scope of protection. 

As referred to in the Legal Review, and pointed to by some stakeholders in response to 
the  Public  Consultation,  some  national  jurisdictions  still  seem  to  lean  towards  limiting 
the scope of protection on account of the product indication. Such diverging practices at 
national  level  with  respect  to  the scope of protection of registered designs gives rise to 
legal uncertainty and conflicts with one key objective of the Directive, which is to ensure 
that  registered  design  rights  confer  upon  right  holders  equivalent  protection  in  all 
Member States124.  

118  E. Derclaye, ‘EU Design Law: Transitioning Towards Coherence? 15 Years of National Case Law’ in 
Bruun, Dinwoodie, Levin & Ohly (eds), Transition and Coherence in Intellectual Property Law, Cambridge 
University Press, 2019. 62 out of 2 214 decisions examined in this article (2.8%) misapplied the individual 
character  requirement  and/or  the  test  of  infringement.  Other  errors  included  courts  making  mistakes  on 
related  aspects,  such  as  using  a  memory  test  rather  than  a  comparison  side-by-side,  comparing  the 
claimant’s and defendant’s products without checking that the claimant’s product is the same as that in the 
registration documents, using several informed users, or referring to an expert instead of an informed user. 
119 Directive Article 7(1), Regulation Article 8(1). 
120 Directive Article 7(2) and (3), Regulation Article 8 (2) and (3). 
121 Directive Article 8, Regulation Article 9. 
122 Judgment of the Court, 8.3.2018, Doceram, C-395/16, ECLI:EU:C:2018:172. The CJEU clarified that to 
“determine  whether  the  features  of  appearance  of  a  product  are  exclusively  dictated  by  its  technical 
function,  it  must  be  established  that  the  technical  function  is  the  only  factor  which  determined  those 
features, the existence of alternative designs not being decisive in that regard”. A similar case, concerning 
Brompton  bikes,  was  brought  before  the  CJEU  regarding  copyright  law  (Judgment  of  the  Court, 
11.06.2020, Brompton, C-833/18, ECLI:EU:C:2020:461). 
123  Joined  cases  Easy  Sanitary  Solutions  v  Group  Nivelles  and  EUIPO  C-361/15  and  EUIPO  v  Group 
Nivelles C-405/15, ECLI:EU:C:2017:720, para 90.  
124 See Recital 10 of the Directive. 

27 

 
                                                           
The responses to  the Public Consultation  showed that 70% of the respondents  consider 
the  need  for  harmonising  the  relevance  of  the  product  indication  for  the  scope  of 
protection to be of fundamental importance for: (i) ensuring a smooth interplay between 
the Community design system and the parallel national design protection system of the 
Member States; and (ii) establishing a level playing field for businesses in the EU. 

Commencement of the protection conferred by a UCD 

According  to  Article  11(1)  of  the  Regulation,  a  UCD  arises  without  registration 
formalities on the date on which the design was first made available to the public within 
the EU. A design is considered to have been made available to the public within the EU 
if  it  has  been  published,  exhibited,  used  in  trade,  or  otherwise  disclosed  in  such  a  way 
that these events  could  reasonably have  become  known to  the circles specialised in  the 
sector concerned, operating within the EU (Article 11(2)). 

The  language  in  Article  11  does  not  make  explicit  the  geographical  location  of  the 
relevant disclosure, and seems to leave open the possibility that a UCD comes into being 
if the disclosure occurs outside the EU. This could be regarded as consistent with Articles 
5 to 7 of the Regulation, which allow for worldwide prior art disclosures to destroy the 
required novelty of a Community design, provided they have become known in the EU. 

However, Article 110a(5) of the Regulation provides that any design which has not been 
made available to the public within the territory of the EU does not enjoy protection as 
a UCD.  Because  of  that  clear  provision,  the  German  Federal  Court  of  Justice  found  in 
a much noticed decision125 that the first disclosure of the design must indeed take place in 
the EU territory for a design to attract protection as a UCD.  

However,  the  question  arises  whether  Article  110a(5)  was  meant  to  apply  to  new  EU 
Member States only given that the whole Article 110a is titled “Provisions relating to the 
enlargement of the Community”. In its decision, the German Federal Court of Justice did 
not deal with that issue but rather considered the position that disclosure in the territory 
of the EU is required as acte clair without there being a need to make a reference to the 
CJEU. 

From the beginning, the EUIPO has taken the view that disclosure must take place within 
the territory of the EU in order to create a UCD126.   

A recent reference to the CJEU from the Intellectual Property and Enterprise Court in the 
UK127 seeking clarification on this issue was withdrawn, and therefore the CJEU did not 
have an opportunity to render an authoritative view on this issue. 

Some respondents to the Public Consultation referred to existing legal uncertainty on this 
issue  and  asked  for  clarity  to  be  provided  when  reforming  the  legislation.  However, 
opinions  were  divided  on  the  question  of  whether  designs  first  disclosed  outside  the 
territory of the EU should give rise to a UCD. Some of the respondents argued in favour 
of  a  narrow  approach  (requiring  disclosure  within  the  EU  territory)  so  as  not  to  enable 
foreign  companies  and  designers  not  doing  business  in  the  EU  to  profit  from  design 
protection in the EU and prevent the Community design registration system from being 
undermined by the creation of UCDs based on the basis of worldwide disclosures. Other 
respondents  referred  to  the  need  to  follow  a  broad  approach,  allowing  in  particular  EU 
industries to obtain the earliest possible protection for their designs when first disclosed 

125 Case I ZR 126/06 Gebäckpresse II [2009] GRUR Int 4/2009, p. 388. 
126 See Communication No 5/03 of the President of the Office.  
127 Beverly Hills Teddy Bear, C-728/19, ECLI:EU:C:2020:114. 

28 

 
                                                           
(such  as  at  international  trade  fairs),  even  if  the  territory  of  disclosure  is  not  that  of 
the EU. 

However,  it  is  clear  that  also  allowing  for  the  creation  of  a  UCD  on  the  basis  of 
disclosure  occurring  everywhere  outside  the  EU  would  imply  nothing  less  than  giving 
automatic  rights  to  the  rest  of  the  world  without  any  reciprocity  or  possibility  of 
monitoring  to  the  clear  detriment  of  EU  industries.  The  argument  that  EU  industries 
might also wish to profit from disclosures outside the EU dwarfs in comparison.  

Conclusions 

Uniform  definitions  and  protection  requirements  introduced  in  the  Directive  and 
Regulation have contributed to the effectiveness and added value of EU legislation on 
design protection.  

However,  the  legislation’s  relevance  is  somewhat  diminished  by  not  being  fully 
adapted to the digital age. This is especially true for the definition of the eligible subject-
matter  of  protection.  Therefore,  more  guidance  could  be  considered  on  the  notion  of 
a ‘product’  with  a  view  to  making  the  system  more  accessible  and  adapting  it  to  the 
needs of emerging industry sectors (e.g. digital designs). Despite current rules appearing 
appropriate  and  coherent,  more  clarity  also  appears  to  be  needed  on  the  visibility 
requirement. Application of the individual character test should be further monitored, in 
particular given the clarifications provided in recent case-law.  

Finally, coherence and level playing field for businesses and designers in the EU could 
be  improved.  The  unclear  relation  between  the  scope  of  protection  conferred  by 
registered  rights  and  product  specification  and  lack  of  alignment  between  relevant 
provisions of Directive and Regulation constitute a problem. The existing ambiguity as to 
the  relevant  geographical  location  of  disclosure  for  the  creation  of  a  UCD  also  creates 
legal  uncertainty  and  distorts  coherence  between  registered  and 
unnecessary 
unregistered Community design protection.  

5.2.3.  Rights conferred  
A  design  confers  on  its  holder  the  exclusive  right  to  use128  it  and  to  prevent  any  third 
party without the holder’s consent from using it (Articles 12 of the Directive and 19 of 
the  Regulation).  As  regards  a  UCD  and  an  RCD  subject  to  deferment,  the  rights  only 
exist if the contested use results from copying the protected design.  

The  Legal  Review  concluded  that  the  design  rights  and  limitations  did  not  cause  any 
major  difficulty  –  except  for  3D  printing  and  spare  parts  –  and  that  related  provisions 
have  been  properly  implemented,  with  slight  textual  variations129.  The  results  of  the 
Public Consultation also show some concerns about the issues of 3D printing and goods 
in transit. 

As regards 3D printing, respondents to the Public Consultation were divided on whether 
design rights provide sufficient protection against copying a protected design by means 

128 The notion of use covers the making, offering, putting on the market, importing, exporting or using of a 
product in which the design is incorporated or to which it is applied, or stocking such a product for those 
purposes. 
129  Results  of  the  Public  Consultation  showed  some  concerns  as  regards  the  implementation  in  some 
Member  States  –  e.g.  Polish  law  reportedly  requires  the  application  of  the  principle  of  speciality  for 
designs, see sec. 5.2.2. 

29 

 
                                                           
of 3D printing130. Their main concern was the lack of clarity around design protection and 
3D  printing,  in  particular  as  regards  the  scope  of  the  rights,  including  the  private  use 
limitation. 

The 3D Printing Study examined the relation between 3D printing and IPRs. Regarding 
design  protection  it  reached  three  main  conclusions.  Firstly,  while  a  computer-aided 
design (‘CAD’)131 file as such cannot be protected as a design, the digital model included 
in  the  CAD  file  can  receive  protection  under  design  law.  Secondly,  although  an 
individual can rely on the private use limitation for 3D printing carried out privately and 
for  non-commercial  purposes,  this  exception  does  not  seem  to  apply  to  supporting 
activities carried out by intermediaries (e.g. printing or scanning by 3D-printing bureaux 
or acts of uploading and sharing of 3D printing files). Finally, it remains unclear whether 
acts of uploading, hosting and downloading a CAD file on a publicly available platform 
constitute a design infringement.  

Against  that  background,  the  3D  Printing  Study  suggested  adapting  the  scope  of  the 
design rights (including limitations) and enforcement measures132. This is in line with the 
recommendations  of  the  Legal  Review  and  the  recommendations  proposed  by  some 
respondents to the public consultation.  

Although  3D  printing  is  not  widespread  at  the  moment,  results  from  the  Public 
Consultation show that stakeholders see a need to tackle the issue now, as they believe it 
could  become  potentially  damaging  for  designers  in  the  future.  Legal  certainty  is  also 
necessary to ensure the development of 3D printing, which offers good opportunities to 
both designers and design users (see Section 3.3).  

Results of the Public Consultation also show that a large majority of respondents (90%) 
are in favour of enlarging the scope of design rights to prohibit the transit of goods that 
infringe design rights registered in the EU through EU territory, even if the goods are not 
intended to be placed on the EU market133. This was also considered a key issue to ensure 
the efficient enforcement of design rights. 
In the joined Philips and Nokia cases134, the CJEU decided that transit of goods through 
the EU territory cannot constitute an infringing act, unless the right holder can prove that 
they are intended to be put on sale in the EU, clarifying what evidence can be presented 
in  that  respect.  However,  stakeholders  report  that  despite  these  clarifications,  the 
threshold  for  evidence  required  by  the  courts  may  remain  unreasonably  high,  as  right 

130 Factual summary report, question 40 (addressed to those respondents who identified themselves i.a. as 
advisors, authorities and researchers). A large proportion of advisors, authorities and researchers who also 
identified themselves as design owners (70%) and users (87%) in particular replied in the negative. 
131 The study makes a distinction between the CAD file as such (the software component) and the digital or 
3D model encompassed in the CAD file (the design component).   
132 In particular, it was recommended to: (i) extend the scope of design rights so as to prevent third parties 
from  creating  software,  a  CAD  file  or  any  document  that  would  lead  to  a  reproduction  of  a  protected 
design;  alternatively,  the  notion  of  use  could  be  extended  to  ‘threatened  use’;  (ii)  introduce  an  indirect 
infringement and/or review the role of intermediaries with a view to making them liable for sanctioning or 
authorising a design infringement; (iii) review the scope of the private use limitation (see Section 5.2.5). 
133 Factual summary report, question 41 (addressed to those respondents who identified themselves i.a. as 
advisors, authorities and researchers). 
134  Judgment  of  the  Court,  1.12.2011,  joined  cases  Philips  and  Nokia  C-446/09  and  Nokia  C-495/09, 
ECLI:EU:C:2011:796.  The  CJEU  specified  that  the  proof  can  be  provided,  i.a.,  “where  it  turns  that  the 
goods have been sold to a customer in the European Union or offered for sale or advertised to consumers 
in  the  EU,  or  where  it  is  apparent  from  documents  or  correspondence  concerning  the  goods  that  their 
diversion to EU consumers is envisaged”. 

30 

 
                                                           
holders are often not in possession of information as to the country of final destination of 
goods in transit135. 

The situation of goods in transit has been clarified as regards trade marks: both the Trade 
Mark  Directive  (‘TM  Directive’)136  (Article10(4))  and  the  EU  Trade  Mark  Regulation 
(‘EUTM  Regulation’)137  (Article9(4))  provide  that  trade  marks’  holders  may  prevent 
third parties from transiting goods infringing EU trade marks (including the packaging) 
through  the  EU’s  territory.  The  declarant  or  holder  of  the  goods  can  defeat  this  by 
proving that the trade mark holder cannot prohibit the placing of the goods on the market 
in  the  country  of  final  destination.  The  burden  of  proof  is  therefore  on  the  contested 
goods’ holder or declarant, not on the trade mark owner. 

The clarification as regards trade mark law has been welcomed, and a large proportion of 
respondents  to  the Public Consultation  considered that design law should be  aligned to 
trade mark law for goods in transit, including concerning guarantees to avoid hampering 
the free flow of trade in legitimate goods (e.g. applications for identical or quasi-identical 
protected  designs  and  a  possibility  for  the  other  party  to  prove  that  the  design  is  not 
protected in the country of final destination).  

Conclusions 

In  general,  the  rights  conferred  by  Community  and  national  designs  are  considered  to 
provide effective protection and achieve the objective of the design acquis. The scope of 
design  rights  also  appears  relevant  for  achieving  the  objectives  of  the  design  acquis. 
However, gaps have been identified. Firstly, the rights conferred might not be robust and 
flexible enough to appropriately deal with the opportunities and challenges arising from 
new technologies, such as 3D printing. Secondly, the current scope of design rights does 
not  allow  for  an  effective  fight  of  counterfeiting  in  the  context  of  goods  in  transit  and 
lacks coherence with trade mark rules.  

5.2.4.  Defences to infringement 

Limitations  

Articles  13  of  the  Directive  and  20  of  the  Regulation  provide  a  range  of  identical 
limitations to the rights conferred by the design rights. These limitations include: (i) acts 
done  privately  and  for  non-commercial  purposes;  (ii)  acts  done  for  experimental 
purposes;  and  (iii)  acts  of  reproduction  for  the  purpose  of  making  citation  or  of 

135  For  example,  the  Antwerp  Court  of  First  Instance  (Rechtbank  van  eerste  aanleg  van  het  gerechtelijk 
arrondissement Antwerpen, 14.02.2014, case 02/7600/A) considered that the evidence such as CE marking, 
EU  languages  on  the  packaging  and  other  documents  indicating  the  EU  as  the  final  destination  are 
insufficient to prove that the goods were intended to be put on sale in the EU. This decision was reversed 
on appeal (Hof van beroep Antwerpen, 2.10.2017, case 2014/AR/2047).  
136  Directive  (EU)  2015/2436  of  the  European  Parliament  and  of  the  Council  of  16  December  2015  to 
approximate the laws of the Member States relating to trade marks, OJ L 336, 23.12.2015, pp. 1–26. 
137  Regulation  (EU)  2015/2424  of  the  European  Parliament  and  of  the  Council  of  16  December  2015 
amending  Council  Regulation  (EC)  No  207/2009  on  the  Community  trade  mark  and  Commission 
Regulation  (EC)  No  2868/95 implementing  Council  Regulation  (EC)  No  40/94  on  the  Community  trade 
mark,  and  repealing  Commission  Regulation  (EC)  No  2869/95  on  the  fees  payable  to  the  Office  for 
Harmonization in the Internal Market (Trade Marks and Designs), OJ L 341, 24.12.2015, pp. 21–94. 

31 

 
                                                           
teaching138.  Additional  limitations  exist,  in  both  texts,  for  the  equipment  of  ships  and 
aircraft, and acts needed to repair such craft139. 

the 

to  counterbalance 

The  Legal  Review  reported  that  Member  States  have  properly  implemented  these 
limitations,  with  some  minor  differences.  The  Legal  Review  also  noted  that  courts  in 
France and the Netherlands have considered that, in addition to the limitations prescribed 
in  the  Directive,  design  rights  should  be  limited  where  freedom  of  expression  is 
concerned,  e.g.  where  artistic  or  satirical  works  are  using  registered  designs  to  make  a 
statement.  
The CJEU’s Nintendo decision140 provides guidance on the scope and conditions of the 
citation limitation. The CJEU clarified in particular that acts of reproduction include two-
dimensional  representation  of  a  product  corresponding  to  a  design,  and  provided  an 
autonomous EU interpretation of the notion of citation141. While some voices expressed 
strong  objections  to  the  Court’s  judgement142,  others  considered  it  to  be  necessary  and 
far-reaching  scope  of  design  protection143. 
appropriate 
As exemplified by a respondent to the Public Consultation, there should be no reason to 
prohibit  representing  a  design  in  order  to  refer  to  it  in  the  context  of  commercial 
communication,  as  long  as  that  is  done  in  accordance  with  honest  practices.  This 
argument is all the more relevant for ensuring coherence with trade mark and copyright 
law, where this is allowed. Although clarification was made in that respect through case-
law, legal certainty would benefit from a clarification in the law. 
The  catalogue  of  limitations  in  design  law  is  sometimes  considered  too  narrow144, 
in particular  when  compared  to  exceptions  and  limitations  set  in  copyright  and  trade 
mark  law  or  in  the  light  of  the  recent  Nintendo  decision.  At  the  same  time,  some 
stakeholders  are  concerned  about  the  consequences  of  the  potential  expansion  of 
limitations,  in  particular  of  the  private  use  limitation,  in  particular  when  considering 
technological developments such as 3D printing. If 3D printing becomes more common 
in the future, some fear that the private use limitation would lead to  de facto immunity 
for  3D  printing  activities.  To  address  this  issue,  some  respondents  to  the  Public 
Consultation suggested modifying this limitation by requiring the 3D printing acts to be 
compatible with fair trade practices and not unduly prejudice the normal exploitation of 
a design. This is in line with the conclusions of the 3D Printing Study which suggested 
adapting the private use limitation along the lines of the three-step test in the Agreement 
on  Trade-Related  Aspects  of  Intellectual  Property  Rights  (‘TRIPS’).  However,  this 

138 Provided in that case that the reproduction acts are compatible  with fair trade practice, do not unduly 
prejudice the normal exploitation of the design, and that mention is made of the source. 
139 This is in line with Article 5ter of the Paris Convention.  
140  Judgment  of  the  Court,  27.9.2017,  joined  cases  Nintendo  C-24/16  and  Nintendo  C-25/16, 
ECLI:EU:C:2017:724, in particular para. 68 and 73. 
141 The CJEU referred to the objective of the Regulation, namely to provide an  “enhanced protection for 
industrial  design  encouraging  innovation  and  development  of  new  products  and  investment  in  their 
production” and concluded that a third party can use the image of a design-protected product to offer for 
sale accessories to that product in order to explain the joint-use of both the product and the accessory. 
142  See  David  Stone,  ‘Design  law  misplayed  in  Nintendo’,  JIPLP,  2017,  Vol.  12,  No  7,  p.  558;  David 
Musker,  ‘Making  citations’  –  mystery  or  mistranslation?  The  Opinion  of  Advocate  General  Bot  in 
Nintendo v Big Ben, JIPLP, 2017, Vol. 12, No 10, p. 834; Jane Cornwell, ‘Nintendo v. BigBen and Acacia 
v Audi; Acacia v. Porsche: design exceptions at the CJEU’, JIPLP, 2019, Vol. 14, No 1, p. 51. 
143 A. Kur, M. Levin and J. Schovsbo, ‘The EU design approach – a global appraisal’, p. 264 et seq. 
144 Issue raised notably by some respondents to the Public Consultation and legal scholars (see for instance 
A. Kur and M. Levin, ‘The design approach revisited: background and meaning’, in A. Kur, M. Levin and 
J. Schovsbo, ‘The EU design approach – a global appraisal’, p. 25). 

32 

 
                                                           
solution  was  criticised  as  ineffective  by  some  representatives  of  right  holders  in  their 
feedback to the Public Consultation. 

Exhaustion of rights, rights of prior use and government use  

Article 15 of the Directive and Article 21 of the Regulation provide that the design rights 
do not extend to acts relating to a design-protected product when that product has been 
put  on  the  market  in  the  Union  with  the  right  holder’s  consent.  Article  22  of  the 
Regulation  provides  that  a  right  of  prior  use  will  exist  for  any  third  party  who  can 
establish that before the date of filing or, when appropriate, the date of priority, it has in 
good  faith  commenced  use,  or  made  serious  preparations  to  that  end,  of  a  protected 
design.  While  there  is  currently  no  such  provision  in  the  Directive,  a  large  majority  of 
respondents  to  the  Public  Consultation  are  in  favour  of  harmonising  the  right  of  prior 
use145. Article 23 of the Regulation provides that any national provision allowing use of 
a national  design  by  or  for  a  government  may  be  applied  to  Community  design,  to  the 
extent that it is necessary for essential defence or security needs. These provisions have 
not raised any particular concern so far. 

Conclusions 

The catalogue of limitations in  EU design law brought  coherence  and added value  by 
harmonising  permissible  uses  across  Member  States.  However,  the  catalogue  now 
appears  too  narrow  to  effectively  strike  the  right  balance  between  the  interests  of 
designers and design users. The catalogue also appears to be incoherent with the system 
in  place  for  other  IPRs.  The  option  of  extending  the  catalogue  of  limitations  could 
therefore be explored. Although the CJEU clarified the scope of the citation limitation, it 
could  be considered to  strengthen this interpretation by  embedding it in  the legislation. 
An  adaptation  of  the  catalogue  of  limitations  could  be  considered  to  ensure  it  is 
relevant  in  view  of  new  technologies.  In  that  respect,  the  possible  reach  of  the  private 
use limitation in the context of 3D printing should be further assessed, also in coherence 
with  the  copyright  regime.  Finally,  given  the  importance  attributed  by  stakeholders, 
the appropriateness of aligning the Directive to the Regulation on prior use as defence to 
infringement could be further explored. 

5.2.5.  Term of protection 

As  explained  (see  Section  5.2.1),  the  term  of  protection  is  different  for  registered  and 
unregistered design rights. RCDs are protected for an initial term of protection of 5 years 
from the filing date of the application (Article 12(1) of the Regulation). For the national 
registered  designs  the  initial  term  of  protection  can  be  one  or  more  periods  of  5  years 
from  the  filing  date  (Article  10  of  the  Directive).  Both  types  of  design  rights  can  be 
renewed for one or more periods of 5 years each, up to a total of 25 years. 

Harmonisation in this field can therefore be considered as already achieved, apart from 
the specific area of designs embedded in spare parts (see Section. 5.5). However, the IPO 
Questionnaire confirmed that a few Member States146 operate with  an initial  term  of 10 
years, with three renewal periods, each of 5 years. 

145 See question 48 of the Public Consultation – 86% of respondents are in favour of harmonising the right 
of prior use. 
146 Bulgaria and Romania. 

33 

 
                                                           
A large majority of all respondents to the Public Consultation (around 75%) consider the 
25-year  protection  of  registered  designs  to  be  adequate147.  Only  a  minority  of  all 
respondents considered the term of protection to be too long (14%, with some suggesting 
to shorten it to 20 years) or too short (12%, with some suggesting to extend it to 50 years 
or to align it to the one existing for copyright or trade marks).  

UCDs are protected for a period of 3 years from the date on which the design was first 
made available to the public within the Community (Article 11(1) of the Regulation; see 
Section  5.2.3).  The  Public  Consultation  revealed  that  a  slight  majority  of  respondents 
(54%)  consider  this  term  of  protection  to  be  adequate148.  Respondents  in  favour  of 
a longer  term  of  protection  generally  argued  that  a  5-year  term  would  be  more 
appropriate.  Others  considered  that  the  beginning  of  the  term  of  protection  should  be 
calculated as starting from the exploitation of the design or the first public use, and not its 
divulgation. Finally, some respondents suggested allowing conversion of non-registered 
designs into registered designs (with retroactive effect) or allowing renewal of the term 
of protection. 

For both registered and unregistered designs, some stakeholders suggested adapting the 
term  of  protection  in  view  of  the  sector  and/or  the  characteristics  of  the  products  (e.g. 
a longer  term  of  protection  for  successful,  iconic  or  investment-intensive  products,  and 
a shorter term of protection for short-life-cycle products such as fashion items).  

Conclusions 

In  general,  the  term  of  protection  for  registered  design  rights  appears  appropriate,  and 
strikes  the  right  balance  to  achieve  effective  protection.  However,  differences  between 
the  provisions  of  the  Directive  and  the  Regulation  concerning  the  initial  term  of 
protection  for  RCDs  and  national  registered  designs  undermine  coherence  of  the  two 
protection systems. Although some stakeholders are critical of the term of protection for 
UCDs,  most  of  them  still  consider  it  appropriate.  Currently,  there  does  not  seem  to  be 
a strong call or need to review the term of protection for UCDs.  

5.2.6.  Relation to other forms of IP protection 

The  issue  of  the  relation  between  design  rights  and  other  IPRs  has  been  taken  into 
consideration since the creation of the EU design acquis149. It plays an important role in 
ensuring  coherence  between  the  protection  granted  by  design  rights  and  the  protection 
granted by other IPRs.  

According  to  the  results  of  the  Public  Consultation  and  legal  literature,  the  interaction 
between  copyright  and  design  law  appears  to  be  the  most  problematic.  Several 
respondents to the Public Consultation considered this relationship to be unclear and said 
it  could  potentially  lead  to  less  reliance  on  design  protection.  Results  of  the  Public 
Consultation  also  show  that  an  unclear  relationship  between  design  law  and  copyright 
law can also lead to a circumvention of one right by another. This could for instance be 

147 Users of the designs of others  were the least satisfied (54%) with the term of protection, with 35% of 
users  considering  it  too  long.  In  comparison,  75%  of  owners  of  designs  were  satisfied  with  the  term  of 
protection (21% considering it too short). Factual summary report, question 15. 
148 This was particularly the case for authorities and SMEs with 71% and 62% respectively considering the 
term  of  protection  to  be  adequate.  However,  a  third  of  respondents  consider  it  to  be  too  short  (44%  of 
owners, 35% of users of designs of others). Factual summary report, question 14. 
149 Articles 16 and 17 of the Directive and Article 96 of the Regulation. 

34 

 
                                                           
the case when right holders rely on copyright to artificially extend the term of protection, 
thus undermining the relevance of design protection.  
Both the Directive (Article 17)150 and the Regulation (Article 96(2)) provide that a design 
can be protected by both design and copyright law (‘principle of cumulation’), provided 
that  protection  requirements  are  fulfilled  for  both  these  rights.  However,  the 
harmonisation  achieved  by  these  provisions  remains  limited,  as  they  specify  that  the 
conditions  under  which  such  protection  is  conferred,  including  the  level  of  originality 
required, are determined by the Member States. This was justified at the time by the lack 
of  complete  harmonisation  of  copyright  law151.  Although  similar  trends  exist  across 
Member States (e.g. in many Member States originality appears more difficult to prove 
than novelty), this limited harmonisation led to some discrepancies across the EU152.  

Since  the  adoption  of  the  Directive  and  the  Regulation,  the  CJEU  has  increasingly 
harmonised  copyright  law.  In  particular,  the  notion  of  ‘work’153  is  considered  an 
autonomous  concept  of  EU  law  that  must  be  interpreted  and  applied  uniformly.  This 
harmonisation  has  helped  shape  and  clarify  the  relation  between  copyright  law  and 
design  law,  as  shown  by  the  recent  case-law  of  the  CJEU  (see  in  particular  Flos154, 
Cofemel155, and Brompton156). It is still too early to assess how this new case-law will be 
applied  by  national  courts,  and  whether  it  brings  sufficient  clarification  to  the  relation 
between design and copyright law.  

However,  harmonisation  of  the  conditions  of  copyright  protection  and  the  recent 
guidance  of  the  CJEU  –  given  the  importance  of  both  these  factors  for  the  interplay 
between design and copyright law – puts into question whether the margin of manoeuvre 
currently left to the Member States remains justified.  

The  interaction  between  design  law  and  trade  mark  law  also  appears  problematic. 
Cumulation of trade mark and design protection can occur in  cases of  figurative marks 
and shape marks. Given this possible cumulation, some stakeholders highlighted the need 
to further harmonise trade mark law and design law (e.g. harmonising invalidity grounds 
to avoid circumvention of one right by another, alignment of the calculation of renewal 
dates, etc.). Recent  developments  and modernisation of trade mark law may also  affect 

150 Article 17 of the Directive is limited to registered designs; as a result,  the interaction  between design 
law and copyright law as regards national unregistered designs is not harmonised.  
151 See recital 8 of the Directive and recital 32 of the Regulation. 
152 Legal Review, pp. 92-93. 
153  Under  Article  2(a)  of  Directive  2001/29/EC,  to  be  protected  by  copyright  a  work  has  to  fulfil  two 
conditions,  namely  originality  in  the  sense  of  being  the  author’s  own  intellectual  creation  and,  second, 
classification as a work is reserved to the elements that are the expression of such creation. 
154  Judgment  of  the  Court,  27.1.2011,  Flos,  C-168/09,  ECLI:EU:C:2011:29.  The  CJEU  clarified  that 
Member States cannot exclude copyright protection for designs, triggering changes in some national law, 
widening the copyright protection for works of applied art, and the possible overlap with design law. 
155  Judgment  of  the  Court,  12.9.2019,  Cofemel,  C-683/17,  ECLI:EU:C:2019:721,  concerning  copyright 
protection of applied arts (interior design),  which appears to be an important area of interaction between 
copyright and design law. Building on the respective objectives and rules of design and copyright law, the 
CJEU concluded that cumulation of protection may only  “be envisaged in certain situations”  (point 52), 
i.e.  when  a  design  meets  the  copyright  protection  requirements,  taking  into  account  that  aesthetic  effect 
does not equal originality. The criterion of the author’s own intellectual creation remains the criterion to be 
taken into account. 
156 Judgment of the Court, 11.6.2020, Brompton Bicycle, C-833/18, ECLI:EU:C:2020:461. In this case, the 
Court concluded that a product whose shape is, at least in part, necessary to obtain a technical result, can 
receive  copyright  protection  where  that  product  is  an  original  work  resulting  from  intellectual  creation, 
meaning that through that shape, its author expresses his creative ability in an original manner by making 
free and creative choices in such a way that that shape reflects his personality. 

35 

 
                                                           
the  relevance  of  design  law.  For  instance,  animated  designs  are  more  likely  to  be 
protected  as  a  movement  mark  than  as  a  design  (where  only  seven  static  views  can  be 
registered).  

Another important question is to what extent design protection is  available for  interior 
design. The layout of a shop can be protected under trade mark law157 or copyright law. 
However, it is not clear whether this is also possible under design law, even if design law 
appears better suited for protecting interior design. Practice shows that it is important for 
the  industry  to  have  a  harmonised  and  clear  legal  framework  for  protection  of  interior 
design  (also  with  respect  to  global  trade),  be  it  for  a  physical  shop  interior  or  for  the 
layout of an online shop. 

Finally, although less problematic, the interaction between designs, patents and utility 
models also raises issues, with designs being sought to protect a technical solution. This 
question  is  closely  linked  to  the  interpretation  of  the  notion  of  technical  function  (see 
Section  5.2.2).  Clarification  brought  by  the  case-law  in  that  respect  may  facilitate  the 
distinction  that  should  be  made  between  purely  technical  solutions  and  designs  that, 
although presenting technical features, should benefit from design protection. 

Conclusions 

EU legislation on design protection set ground rules for the interaction between copyright 
law and design law. However, the limited harmonisation has led to  some discrepancies 
across Member States. This has resulted in an incoherent approach across the EU, and 
undermined  the  relevance  and  effectiveness  of  the  design  protection  system.  CJEU 
case-law is  now increasingly harmonising national  copyright  law across the EU,  which 
means it no longer appears necessary to leave a margin of manoeuvre to Member States. 
Insufficient clarity on the interaction between both copyright law and trade mark law on 
the one hand and design law on the other hand reduces the coherence of the EU’s IPR 
legal framework. 

5.2.7.  Conclusions  

EU  legislation  on  design  protection  has  proven  to  be  effective  in  offering  relevant 
protection  tools.  It  provides  an  appropriate  range  of  different  rights  to  designers 
(registered  and  unregistered  rights,  national  or  EU  coverage),  allowing  them  to  choose 
the protection titles best suited to their needs. It thus contributes to the added value of 
the design protection system.  

Uniform  definitions  and  protection  requirements,  as  well  as  the  introduction  of  unitary 
titles, also contributed to the effectiveness and added value of EU legislation on design 
protection. These facilitate access to design protection in the EU and its Member States. 
However,  the  legislation’s  relevance  is  somewhat  diminished  by  not  being  fully 
adapted to the digital age, in particular for: (i) the definition of the eligible subject-matter 
of protection; or (ii) limitations.  

The protection conferred by design rights appears to be effective, although improvements 
could  be  made  to  better  address  challenges  and  legal  uncertainty  deriving  from:  (i)  the 
development  of  new  technologies;  (ii)  interaction  with  other  IPRs;  and  (iii)  increased 
levels  of  counterfeiting.  In  addition,  the  catalogue  of  limitations  could  provide  better 
balance between the interests of designers and design users.  

157 Judgment of the Court, 10.7.2014, Apple Store, C-421/13, ECLI:EU:C:2014:2070. 

36 

 
                                                           
Finally,  the  coherence  of  the  EU  design  acquis  could  be  improved,  as  currently  both 
internal  coherence  (i.e.  the  term  of  protection  for  different  design  rights  and  the 
disclosure 
rights)  and  external  coherence 
(i.e. coherence in the interaction of design rights with copyright law and trade mark law) 
seems undermined by the existing differences. 

for  different  design 

requirements 

Effectiveness 

Efficiency 

Relevance 

Coherence 

EU added 
value 

Different ways 
of protecting 
designs 
Protection 
requirements 
and scope of 
protection 
Rights  
conferred 
Defences to 
infringement 
Term of 
protection 
Relation to 
other forms of 
IP protection 
Overall 

+ + 

+ 

+ - 

- 

+ + 

+ - 

+ 

5.3.  PROCEDURES 

N/A 

+ + 

N/A 

N/A 

N/A 

N/A 

N/A 

N/A 

- 

+ - 

- 

N/A 

- 

+ - 

+ 

+ - 

+ - 

- 

+ - 

- - 

- 

+ + 

+ + 

N/A 

+ 

N/A 

N/A 

+ 

As  explained  in  Section  5.2.1,  the  EUIPO  is  competent  to  examine  applications  for 
RCDs,  and  the  national  IP  offices  are  responsible  for  carrying  out  examination  for 
registered national designs. Since there has been no harmonisation of the procedures to 
obtain,  maintain  or  invalidate  national  design  rights,  Member  States  are  free  to  set 
procedural provisions158. As a result, each Member State has its own processes in place. 
It must  be  noted,  however,  that  in  order  to  align  their  practices,  national  IP  offices,  in 
cooperation  with  the  EUIPO  under  the  so-called  Convergence  Programmes,  have 
established certain common practices (see Annex VI).  

5.3.1.  Means and requirements of design representation 

Representation of the design is a key and obligatory element of any design application.  

For  RCDs,  the  representation  of  a  design  consists  in  its  graphic  or  photographic 
reproduction159,  and  can  be  filed  on  paper  or  by  electronic  means.  The  design  must  be 
reproduced on a neutral background and cannot be retouched.  

For  national  registered  designs,  the  representation  requirements  are  determined  by  the 
Member  States.  The  results  from  the  Public  Consultation  show  that  among  the  aspects 
left  untouched  by  the  Directive,  the  formal  requirements  to  represent  a  design  were 
considered  most  in  need  of  harmonisation160.  One  stakeholder  association  noted  that 
harmonisation  of  these  formal  requirements  is  important  to  allow  applicants  to  use  the 
same  set  of  design  representations  at  the  EUIPO  and  in  any  Member  State  (and,  as 

158 Recital 6 of the Directive. 
159 Article 4(1) of the Implementing Regulation. 
160 Factual summary report, question 48. 

37 

 
 
                                                           
a vision in the future, at any IP office party to the Hague System)161. Lack of alignment of 
such  formalities  may  also  lead  to  obtaining  different  scope  of  protection  for  the  same 
design  in  different  countries.  The  Legal  Review  also  reports  that  among  the  Member 
States  reviewed,  there  is  significant  divergence  in  the  requirements  of  national  offices 
concerning  representations  of  a  design.  Such  divergences  relate,  among  others,  to  the 
number  of  viewings,  the  size  of  the  paper  for  paper  filings,  and  the  acceptance  of 
computer-aided  representations.  These  diverging  formal  requirements  may  hamper  the 
interoperability  of  the  design  systems.  They  prevent  applicants  from  claiming  priority 
and  using  the  same  design  representation  across  jurisdictions162,  increase  registration 
costs  and  potentially  lead  to  national  rights  of  different  scope  for  the  same  original 
design.  

They  also  make  it  more  difficult  to  develop  common  IT  tools  in  the  EU.  For  instance, 
representing a design on a neutral background is of key importance to avoid hampering 
automated image searches and to meet the representation requirement of the Design Law 
Treaty (see Section 5.6.2). The background of a design representation should be ‘empty’ 
in the sense that no other objects may be shown.  

Maximum number of views 

The permitted number of views of a design that can be filed for representation purposes 
is  limited  to  a  maximum  of  seven  different  perspectives  of  the  same  design  for  an 
RCD163. Only one copy of each view can be filed.  

Feedback  from  stakeholders  suggests  that  this  number  is  perceived  as  too  limited. 
Different  consultations  indicate  that  this  maximum  of  seven  views  causes  legal 
uncertainty when filing internationally or in other EU Member States where much higher 
numbers (e.g. 10 in Germany and more than 100 in the US) or even an unlimited number 
of  views  (e.g.  in  most  EU  Member  States  and  WIPO)  are  allowed.  Moreover,  some 
respondents  to  the  Public  Consultation  mentioned  that  having  such  a  small  number  of 
views  can  limit  the  ability  of  a  designer  to  show  the  design  fully  or  show  particular 
aspects  of  the  design  fully.  Respondents  claimed  that  a  greater  number  of  views  is 
desirable in particular for some types of designs, for instance to show details of a multi-
position or motion design. 

Both  the  Legal  Review  and  numerous  respondents  to  the  Public  Consultation  therefore 
recommended increasing the number of views allowed for an RCD application. Indeed, 
the existing seven-view limit in the Implementing Regulation is problematic with a view 
to facilitating the filing of designs and increasing both legal certainty and the efficiency 
of the Community design protection system. However, further reflection and analysis is 
needed as to whether a higher limit or an unlimited number of views should be allowed, 
given the current option of filing an additional dynamic representation of 3D designs.  

Since  the  Directive  did  not  harmonise  the  number  of  views  that  can  be  filed  as  part  of 
a national  design  application,  the  requirements  differ  across  Member  States,  leading  to 
a potential  divergence  in  the  scope  of  protection  granted  for  the  same  design,  and  thus 
undermining the coherence of the system. 

161  For  example  when  the  first  filing  has  more  than  seven  views  or  other  factors  that  require  additional 
examination by the office this may cause delay.  
162  See  section  3.4.2  of  Convergence  on  graphic  representations  of  Designs,  Common  Communication 
CP6, https://www.tmdn.org/network/graphical-representations.  
163 Article 4(2) of the Implementing Regulation. 

38 

 
                                                           
Means of representation 

Currently the RCD registration procedure is constrained to static views only (there is no 
possibility  of  filing  a  dynamic  view  of  a  design),  even  for  three-dimensional  designs. 
While 3D digital representations can be filed at the EUIPO, they are only considered as 
an  additional  technical  means  of  viewing  the  design,  and  do  not  replace  conventional 
static views164. CD ROMS and other data carriers are also not accepted.  

According  to  the  Legal  Review,  introducing  the  possibility  of  filing  dynamic  views 
would make it possible to concretise the design by showing certain qualities which might 
not  necessarily  be  visible  in  a  line  drawing.  This  is  in  line  with  the  feedback  received 
through  the  Public  Consultation.  Some  respondents  consider  that  the  current  graphic 
representations  have  limited  capability  to  represent:  (i)  designs  with  different  forms  of 
appearance or assembly (modular systems, on/off, open/closed, etc.); or (ii) designs that 
show  a  set  sequence  or  movement.  Stakeholders  therefore,  suggest  to  consider 
introducing  other  means  of  representation, 
in  particular  3D  digital 
representations and video files, to protect a wider range of designs and to protect designs 
more  effectively.  In  this  context,  the  stakeholders  stress  that  design  protection  should 
also  be  available  for  manifestations  that  are  not  physically  defined  as  two  or  three-
dimensional  objects  (e.g.  animated  designs  and  graphical  user  interfaces),  and  that 
widening the notion of  product  to  other types of designs is  thus  necessary  (see Section 
5.2.2).  

including 

Against  this  background,  the  restriction  to  mere  static  graphic  means  of  representation 
should be considered not effective and no longer relevant to satisfy the need for clarity on 
the subject-matter of protection. Broadening the means of representation could facilitate 
the  filing  of  designs  of  different  (new)  types.  The  possibility  of  filing  dynamic  views 
could improve the effectiveness and efficiency of Community design protection, adapting 
its rules to the needs of the digital economy, as already done in the area of EU trade mark 
law.  

According to the Legal Review, at national level the practice of accepting dynamic views 
of  designs  is  not  widespread.  Nevertheless,  since  most  interview  participants  were  in 
favour of this possibility, the Review recommends that Member States should, if feasible, 
offer the possibility to register dynamic views of a design. This would allow the national 
offices to adopt the technology when appropriate, and give the applicants a possibility of 
opting  for  a  method  of  representing  their  design  that  provides  them  with  the  greatest 
scope of protection. The potential for harmonising the national rules on the representation 
of  a  design  could  be  further  explored  with  a  view  to  aligning  them  with  those  of  the 
Community design regime and facilitating access to design protection. 

Filing of a specimen 

The graphic or photographic reproduction of a design can be substituted by a specimen 
(physical sample) of the design if an RCD application concerns a two-dimensional design 
and contains a request for deferment (Article 36(1)(c) of the Regulation; Article 5(1) of 
the Implementing Regulation).  

However, a majority (55%) of the respondents to the Public Consultation thinks that the 
filing of specimens is no longer relevant. It is mentioned that this option is not often used 

164 Article 36(5) of the Regulation and Article 4 of the Implementing Regulation. 

39 

 
                                                           
and appears obsolete in an era of online deposits. France, for instance, no longer accepts 
the deposit of physical specimens.  

The possibility to accept and store specimens of designs incurs administrative costs for 
IP  offices.  A  very  low  number  of  specimens  are  filed  with  the  EUIPO  –  only  103 
(including inadmissible filings) since 2003165.  

Visual disclaimers 

Neither the Community design legal regime nor the national design legal regime echo the 
agreed  common  practice  on  visual  disclaimers166  established  by  the  EUIPO  in 
cooperation  with  most  EU  Member  States  as  part  of  the  Convergence  programme  on 
graphic representations (‘Common Practice’). The Community design legal regime does 
not contain a reference to the use of visual disclaimers, which indicate the features of the 
design shown in  the representation  that are not  intended to  be protected.  However, this 
Common Practice is  reflected in  the EUIPO’s design  guidelines.  Where a disclaimer is 
used,  broken  lines  are  recommended.  The  guidelines  further  explain  that  descriptions 
cannot be used for this purpose, since descriptions do not affect the scope of protection of 
the design as such167 and are not published168. 

Some respondents to the Public Consultation proposed changing the current legal regime 
by allowing a description as an interpretative  –  or even as a decisive – factor (e.g. as a 
verbal disclaimer) for determining the subject-matter of design protection. However, the 
verbal  disclaimers  need  to  be  translated  and  are  less  appropriate  to  indicate  excluded 
features.  

The  Legal  Review  argues  that  the  Convergence  Programme  between  the  EUIPO  and 
national  offices  is  a  move  towards  a  harmonised  position  in  respect  of  design 
registrations.  However,  it  would  be  better  to  codify  the  Common  Practice  in  national 
laws,  considering  that  in  most  Member  States  technical  drawings;  explanatory  text, 
wording or symbols are not allowed within the representation169. If this codification does 
not take place, the effectiveness (clarity on scope of protection) and the efficiency (need 
to account for different rules in different jurisdictions) of the design protection system is 
undermined.  The  potential  for  further  harmonisation  of  the  national  rules  on  visual 
disclaimers should therefore be explored, with a view to aligning them with those of the 
Common Practice and thus increasing coherence and legal certainty across the EU.  

165  EUIPO  data.  The  use  of  this  option  decreased  over  time  (17  specimens  filed  in  2003  compared  with 
only 2 filed in 2019), and seems to have been of very little significance in recent years (2 specimens filed 
in 2016, 3 in 2017, 1 in 2018, and 2 in 2019). 
166  Guidelines  for  Examination  in  the  Office,  Examination  of  applications  for  registered  Community 
designs, page 41, 01/02/2020,  established  within the  framework of the  Convergence program on  graphic 
representations. See also Annex VI. 
167 See Article 36(6) of the Regulation. 
168 See Article 14(2)(d) of the Implementing Regulation. 
169  See  section  3.4.2  of  Convergence  on  graphic  representations  of  Designs,  Common  Communication 
CP6, https://www.tmdn.org/network/graphical-representations.  

40 

 
 
 
 
 
                                                           
Conclusions 

The introduction of the representation requirements has largely proven to be effective for 
traditional design types.  However, these requirements clearly need to  be overhauled to: 
(i)  facilitate  registration;  (ii)  make  it  easier  to  better  determine  the  scope  of  design 
protection;  and  (iii)  account  for  technological  advances.  The  current  legal  requirement 
that a Community design must be represented by graphic means with a limitation on the 
permitted  number  of  perspectives  to  seven  static  views  hampers  the  effective  and 
efficient  use  of  the  system.  It  also  undermines  the  system’s  relevance,  as  the 
admissible means of representation do not account for the latest technical developments 
and  the  possibility  of  protecting  digital  designs.  The  lack  of  provisions  on  disclaimers 
also hampers the effective and efficient use of the system, and the option of substituting 
the representation with a specimen is no longer relevant.  

On a national level, there is significant divergence in the requirements for the number of 
views,  the  neutral  background,  and  the  acceptance  of  computer-aided  representations. 
This  incoherence  between  different  systems  leads  to  legal  uncertainty  when  filing  in 
multiple  jurisdictions.  It  also  makes  it  difficult  to  file  designs  of  different  (new)  types, 
which does not respond to the needs of digital economy.  

Missing harmonisation of the design representation regime across the EU undermines the 
coherence and overall efficiency of the design protection system. More uniform and more 
digital  representation  requirements  would  make  it  possible  for  designers  –  and  in 
particular SMEs and individual designers – to reduce compliance costs. 

5.3.2.  Different filing options 

When  filing  an  RCD  application  the  applicant  can  opt  to:  claim  priority,  request 
deferment  of  publication,  or  decide  to  file  for  a  multiple  application;  additional 
requirements apply in all these cases. Similar filing options are provided for in most of 
the national laws.  

Claiming priority 

A priority date is used to establish the precedence of rights, and has crucial importance 
for assessing novelty and individual character of a design. Applicants can rely on the so-
called  convention  priority170  to  gain  a  right  of  priority  of  six  months  from  the  date  of 
filing of the first application. Efficient use of the convention priority also depends on the 
uniform application of the representation requirements across the EU (Section 5.3.1).  

The RCD can also benefit from the so-called exhibition priority171, which has the effect 
that the date of priority will count as of the date on which the design was displayed at an 
officially recognised exhibition172. The request, accompanied by evidence of the display, 
must be filed within 6 months of the initial disclosure at an exhibition173.  

Contrary to the design laws of several Member States, the scope of relevant exhibitions 
for  claiming  priority  covered  by  the  Regulation  is  essentially  limited  to  world 

170 Priority of applications filed in different jurisdictions is determined in line with the Paris Convention for 
the Protection of Industrial Property (1883); Article 41 of the Regulation. 
171 Article 44 of the Regulation. 
172 Exhibition falling within the terms of the Convention on International Exhibitions signed in 1928 and 
last revised in 1972. 
173 Article 44(1) and (2) of the Regulation and Article 9(1) and (2) of the Implementing Regulation. 

41 

 
                                                           
exhibitions174  and  does  not  cover  display  at  other,  national  or  international,  exhibitions. 
As a result, the EUIPO only accepts evidence of world exhibitions, and does not accept 
exhibition certificates from other trade fairs. Given the paucity of world exhibitions, and 
the  fact  that  such  exhibitions  do  not  involve  business-to-business  exchange,  this 
limitation  was  criticised  by  quite  a  number  of  respondents  to  the  Public  Consultation 
representing the exhibition industries, who called for broadening the notion of exhibition 
priority under the Community design regime to other trade fairs. 

While  some  Member  States  (e.g.  Bulgaria,  Croatia,  Czechia,  Denmark,  Germany, 
Hungary, Latvia, Lithuania, Poland, Romania, Slovakia, Slovenia, and Spain) provide for 
exhibition priority, some others (e.g. Estonia, Ireland and the United Kingdom), do not. 
The Legal Review reports that in many Member States, exhibition certificates from trade 
fairs, including those organised by private entities, are accepted as evidence of priority. 
For example, in Germany in the  years 2017, 2018 and 2019, respectively 207, 140 and 
118 priority certificates were issued.  

In spite of these different practices throughout the EU, the Legal Review finds it doubtful 
whether  a  practical  need  for  harmonisation  exists,  considering  the  minimal  number  of 
such exhibitions and the fact that Member States have some form of protection for such 
exhibitions  in  their  national  law.  On  the  other  hand,  different  views  were  expressed 
through the Public Consultation. Some respondents suggested broadening the list of trade 
fairs  that  are  recognised  for  establishing  exhibition  priority,  to  improve  the  EU  design 
protection systems. The lack of harmonisation of priority certificates issued by trade fair 
organisers was considered to negatively influence the coherence of the Community and 
national design systems. 

The potential for harmonising the provisions on exhibition priority across the EU could 
be further explored to improve the efficiency and coherence of the EU design protection 
systems.  

Request for deferment of publication 

The  applicant  for  an  RCD  may  request  that  its  publication  be  deferred  for  30  months 
from  the date of its  filing or  from  its priority  date (Article 50(1) of the Regulation).  In 
these cases, only very basic details about the design (number, filing and registration date, 
the  names  of  the  applicant  and  the  representative)  are  published.  Neither  the  design 
representation  nor  the  indication  of  products  are  published  (Article  14(3)  of  the 
Implementing  Regulation).  This  period  of  confidentiality  affords  the  applicant  an 
opportunity  to  further  develop  a  marketing  strategy  or  to  finalise  preparations  for 
production without competitors being aware of the design(s) in question. 

Since  the  launch  of  the  Community  design  system,  approximately  1  out  of  10  RCD 
registrations  filed  directly  with  the  EUIPO  was  subject  to  deferment;  the  demand  for 
deferment of publication has been steadily growing (Fig. 6).  

174 Also referred  to as  ‘expo’ a  world exhibition is a large  international exhibition designed to showcase 
achievements of nations. These exhibitions vary in character and are held in different parts of the world at a 
specific site for a period of time, ranging usually from 3 to 6 months. 

42 

 
 
 
 
 
                                                           
Fig. 6 – Volumes of deferred RCD applications 

Source: EUIPO Statistics of Community Designs 2003 to 2020 Evolution 

The  Legal  Review  reports  that  while  many  of  the  Member  States  have  provisions 
concerning deferred publication, the period of deferral varies significantly175. Also, some 
Member States do not provide for deferral of publication at all (e.g. Poland and Italy).   

According  to  the  Legal  Review,  most  Member  States  that  have  made  provision  for 
deferred  publication  do  not  cite  any  difficulties  with  the  system.  However,  most 
respondents to the Public Consultation (76%) are in favour of harmonisation of the rules 
on deferment of publication, and some respondents suggest making the option to request 
a deferral mandatory at national level.  

The potential for harmonisation of the rules on – and the length of – deferred publication 
should  be  explored  with  a  view  to:  (i)  enhancing  legal  certainty  and  coherence;  (ii) 
reducing costs in managing design portfolios; and (iii) establishing a level playing field 
for businesses. 

Multiple applications 

While applying for an RCD, an applicant may choose to combine a number of designs in 
one  application  (‘multiple  application’).  This  option  was  introduced  to  simplify  the 
registration  process,  in  particular  for  those  sectors  of  industry  which  produce  large 
numbers  of  possibly  short-lived  designs  over  short  periods  of  time176.  However,  it  only 
facilitates  the  process  for  filing  multiple  designs;  each  of  the  designs  contained  in  a 
multiple application is examined and dealt with separately. In particular, each design may 
separately be: enforced, licensed, renewed, assigned, the subject of deferred publication, 
or declared invalid (Article 37(4) of the Regulation).  

The number of designs contained in a multiple application is unlimited. The designs do 
not have to be related to one another or be otherwise similar. However, the designs must 
meet the ‘unity-of-class’ requirement: the products in which the designs are intended to 
be incorporated or to which they are intended to be applied must all belong to the same 
class of the Locarno Classification177. Multiple applications constitute almost 50% of all 
applications,  which  shows  the  practical  importance  of  this  filing  option  (Fig.  7).  The 
Legal  Review indicates that  although small and large entities may file multiple designs 
the current fee structures (see Section 5.3.6) tend to most benefit larger entities, who (all 
other  things  being  equal)  have  more  designs  per  year  to  file  and  therefore  access  the 
lowest rate more often. 

175 E.g., the period of deferral is 6 months in Denmark and Sweden; 12 months in the Benelux countries, 
United Kingdom, Luxembourg and Slovenia; 18 months in Austria; and 30 months in Czechia, Spain and 
Lithuania. 
176 Recital 25 of the Regulation. It should also be read in light of the aim set out in Recital 18 of “keeping 
to a minimum the registration and other procedural burdens on applicants.” 
177 As an exception, the indication ornamentation or product(s) X (ornamentation for -) in Class 32-00 can 
be combined with indications of products belonging to another Locarno class. 

43 

 
 
                                                           
Fig. 7 – Volumes of multiple applications for RCD 

Source: EUIPO data 

Although  the  respondents  to  the  Public  Consultation  appreciated  the  benefit  of 
combining  multiple  designs  in  a  single  application,  they  considered  the  unity-of-class 
requirement  too  rigid  and  burdensome.  The  reason  is  that  not  all  products  in  which 
designs  are  intended  to  be  used  belong  to  the  same  class.  One  respondent  gave  an 
example  of  products  such  as  ‘hairdryers’  and  ‘parts  of  hair  dryers’  which  –  due  to  the 
unity-of-class  requirement  –  cannot  be  included  in  the  same  multiple  application, 
whereas  other  completely  different  products  such  as  a  ‘chair’  and  a  ‘table’  can.  As  a 
result, instead of facilitating the expeditious and smooth processing of multiple designs, 
the  unity-of-class  requirement  gives  rise  to  many  deficiencies  to  be  remedied  in  the 
course  of  the  application  procedure.  This  is  because,  in  order  to  save  costs,  applicants 
often  choose  incorrect  product  indications  or  apply  for  designs  within  a  certain 
(complementary) product range, in an attempt to adhere to the same class requirement for 
products that belong to different classes.  

According  to  the  Legal  Review  and  opinion  of  most  respondents  to  the  Public 
Consultation, abolishing the requirement for designs in multiple applications to belong to 
the  same  Locarno  Classification  would  be  beneficial.  The  unity-of-class  requirement 
creates  unnecessary  administrative  burdens  for  the  EUIPO  and,  in  particular,  for 
businesses  wishing  to  apply  for  multiple  designs  by  means  of  one  application.  In  its 
current form, it is neither effective nor efficient. It cannot therefore be seen as relevant 
anymore for fulfilling the objectives of the Regulation. 

Although  the  Directive  has  no  provisions  about  multiple  applications,  this  option  is 
available in most of the Member States178 even though the conditions differ. According 
to the Legal Review, most national laws still require that the designs applied for belong 
to  the  same  class  of  the  Locarno  Classification.  This  is  not  the  case  in  Germany,  the 
Benelux countries and the United Kingdom. Under French law, there is an exception to 
the  unity-of-class  requirement  for  designs  pertaining  to  industries  that  change  the  form 

178 The Estonian and Polish national offices do not accept multiple applications, but allow different variants 
of the design in one application. 

44 

 
 
                                                           
and  presentation  of  goods  frequently.  The  maximum  number  of  designs  that  can  be 
included in a multiple application also varies across the Member States179.  

The Review further reports that most interviewees from IP offices considered the unity-
of-class requirement not helpful or no longer necessary. Also, the results from the Public 
Consultation show that 88% of all respondents considered that multiple applications and 
its conditions are in need for harmonisation. 

The  lack  of  harmonisation  of  rules  on  multiple  design  applications  makes  such 
applications  burdensome  and  costly  for  businesses,  including  in  the  context  of  multi-
jurisdictional filings.  

Conclusions 

EU  value  added  has  been  created  by  the  filing  options  for:  (i)  claiming  convention  or 
exhibition  priority;  (ii)  requesting  deferment  of  publication;  and  (iii)  filing  several 
designs  in  one  application.  These  options  are  also  considered  relevant.  However,  the 
effectiveness  and  efficiency  of  these  filing  options  are  not  optimal.  The  lack  of 
coherence in deferment periods across the EU, and the differences in types of trade fairs 
covered by the notion of exhibition priority, make the application of these filing options 
burdensome  and  costly  for  businesses,  especially  for  multi-jurisdictional  filings. 
The rules  on  multiple  applications,  and  in  particular  the  unity-of-class  requirement,  are 
also  burdensome  for  businesses,  and  they  give  rise  to  many  deficiencies  that  must 
subsequently be remedied in the course of the application procedure. 

5.3.3.  Substantive examination 

During  the  registration  process,  the  substantive  examination  of  RCDs  is  limited  to 
a verification  that  the  application  is  for  a  design  and  that  the  design  is  not  contrary  to 
public  policy  or  morality180,  thereby  keeping  to  a  minimum  the  registration  and  other 
procedural burdens on applicants181. As a result, the EUIPO does not check whether the 
design is new or if it possesses individual character182.  

This  limited  examination  on  substantive  grounds  seems  to  work  well  in  practice.  The 
majority  (66%)  of  the  respondents  to  the  Public  Consultation,  when  asked  whether  the 
EUIPO should carry out some novelty examination, replied in the negative. They are of 
the  opinion  that  the  main  advantage  of  the  system  –  quick  and  efficient  registration  – 
should not be impaired. Only 10% of all respondents would favour a mandatory search. 
Those against a mandatory search would prefer that special tools are made available to 
conduct image searches183, or that a novelty search by the EUIPO be optional. This would 
counterbalance the lack of examination and increase legal certainty. Their main argument 
against mandatory  novelty  examination of RCDs (an argument also  made by the  Legal 
Review184)  is  that  it  would  not  bring  significant  benefits  to  users,  but  would  increase 
costs,  significantly  delay  registration  and  would  not  be  exhaustive,  since  any  earlier 
design in the world (registered or not) can be novelty-destroying. Moreover, searching by 

179 From up to 50 in Spain and the Benelux countries, to up to 100 in Germany, Lithuania and Portugal; in 
the United Kingdom there is no limit. 
180 Article 9 of the Regulation. 
181 Recital 20 of the Regulation. 
182 Article 47(1) of the Regulation and Article 11(1) of the Implementing Regulation. 
183 https://euipo.europa.eu/ohimportal/en/searching-for-images-in-esearch-plus. 
184 See Legal Review, p. 109. 

45 

 
                                                           
product  class  is  not  possible,  since  neither  the  product  indication  nor  the  classification 
affects the scope of protection of a Community design as such185.  

On the other hand, according to some respondents to the Public Consultation, too many 
designs lacking novelty and individual character are being registered, which goes against 
legal certainty and leads to unjust situations in court. They consider that presumption of 
validity  of  an  RCD  puts  an  unfair  burden  on  the  alleged  infringer  who  would  have  to 
conduct  costly  prior  art  searches  to  prove  the  invalidity  of  the  invoked  designs  rights, 
while the design right holder may not have conducted a search before filing at all. 

However, these concerns do not seem to be reflected in the total number of disputes. Data 
received  from  the  EUIPO  reveal  that,  on  average,  less  than  0.05%  of  all  RCDs  are 
declared invalid each year. Furthermore, empirical analysis of the design case-law of the 
EU Member States shows that the absence of a full-blown substantive examination does 
not mean that designs are more likely to be declared invalid186.  
The Directive merely lists the substantive grounds for refusal of registration187 for those 
Member  States  that  provide  for  substantive  examination  of  applications  before 
registration. As a result, according to combined data from the Legal Review and the IPO 
Questionnaire,  only  five  national  IP  Offices  provide  for  such  substantive  examination 
and  assess  ex  ante  whether  a  design  applied  for  meets  the  requirements  of  novelty  and 
individual  character.  These  are  the  offices  in  Czechia,  Finland,  Hungary,  Romania  and 
Slovakia,  which  to  varying  degrees  also  examine  some  of  the  optional  grounds  for 
refusal188.  Such  examinations  impact  the  overall  duration  of  registration  proceedings  in 
these  offices189.  However,  most  national  offices  perform  a  limited  check  of  substantive 
grounds,  verifying  only  if  the  application  is  for  a  design  that  is  not  contrary  to  public 
policy or morality, or does not constitute improper use of a protected symbol190. 

Respondents  to  the  Public  Consultation  would  welcome  harmonisation  of  the  different 
national  substantive  examination  procedures191.  However,  the  results  of  the  Public 
Consultation are not indicative of how such harmonisation should take place.  

Since  the  Legal  Review  assesses  that  introduction  of  a  mandatory  ex  ante  novelty 
examination  would  increase  burdens  rather  than  bring  benefits,  the  Review  concludes 

185 Article 36(6) of the Regulation. A registered Community design confers on its holder the exclusive right 
to use the relevant design in all types of products, and not only in the product indicated in the application 
for registration (21/09/2017, C-361/15 P & C-405/15 P, Shower Drains, EU:C:2017:720, § 93). 
186 O. Church, E. Derclaye, G. Stupfler, ‘An empirical analysis of the design case law of the EU Member 
States’  (2019)  International  Review  of  Intellectual  Property  and  Competition  Law,  available  on 
https://link.springer.com/Art./10.1007/s40319-019-00813-0. 
187 Article 11(1) of the Directive. 
188 E.g. Finland and Romania examine most of the grounds listed in Article 11 of the Directive. 
189 According to data available on the portal of the European Union Intellectual Property Network (EUIPN, 
https://www.tmdn.org/network/web/csc),  the  average  duration  of  registration  proceedings  amounts  on 
average  to  one  year  in  CZ,  over  3  months  in  FI,  over  8  months  in  RO,  and  around  4  months  in  SK. 
According to the IPO questionnaire the average duration in HU is 4 months. Registration of an RCD with 
the  EUIPO,  where  no  substantive  examination  is  carried  out,  took  4  days  on  average  for  applications 
without deficiencies (2019). See Section 5.3.5. 
190 Symbol protected by Article 6ter of the Paris Convention or by national law. 
191 Of those design law aspects not (fully) harmonised by the Directive, 92% of the respondents consider 
the substantive examination the second most important in need of harmonisation. 

46 

 
                                                           
that  there  is  a  strong  case  for  abandoning  such  a  system  also  on  the  national  level, 
especially as so few Member States currently use the practice192. 

Conclusions 

The  limited  examination  on  substantive  grounds  appears  to  be  effective  and  efficient 
overall. It therefore fulfils the objectives of the Regulation, namely to guarantee speedy 
and  cost-efficient  registration  with  minimum  administrative  burden.  The  limited 
examination  on  substantive  grounds  thus  contributes  to  the  EU  added  value  of  the 
design  protection  system.  Efforts  to  develop  powerful  and  user-friendly  search  tools  to 
enable businesses and designers to conduct reliable searches are considered particularly 
useful by both design applicants and design users.    

The  requirement  for  national  offices  to  examine  prior  art  adds  to  the  administrative 
burden they face. It also causes considerable delay and extra costs for businesses seeking 
design  protection  at  national  level.  The  benefits  of  harmonising  national  rules  on  the 
scope of substantive examination so that they align with the Community design system 
should therefore be further explored. This could improve coherence, facilitate access to 
design protection, and create a level playing field for businesses and individual designers. 

5.3.4.  Administrative invalidity proceedings 

Once  a  Community  design  right  has  been  registered,  it  can  be  declared  invalid  by  the 
EUIPO upon a direct request to the office, or by a court on the basis of a counterclaim193. 

The  grounds  for  declaring  an  RCD  invalid  are  listed  exhaustively  in  the  Regulation 
(Article 25). The EUIPO reports194 that the vast majority (87.7%) of the invoked grounds 
found in invalidity actions filed during the last decade concern claims by applicants that 
the  contested  designs  lack  novelty  or  do  not  possess  individual  character.  Claims  that 
holders are not entitled to the contested designs accounted for 6.7% of invoked grounds, 
with the remaining 5.6% being distributed among the other existing grounds.  

Feedback  to  the  Public  Consultation  shows  that  82%  of  all  respondents  are  overall 
satisfied with the invalidity proceedings at the EUIPO. This is in line with the data from 
the EUIPO’s annual user satisfaction survey195.  

In  summary,  the  legislator’s  choice  to  provide  for  an  invalidity  procedure  before  the 
EUIPO has proven to be efficient and is working effectively. 

At national level, every Member State has introduced its own procedure for invalidating 
a design right. A major distinction exists between those Member States where invalidity 
proceedings  can  be  brought  before  national  offices  (e.g.  Austria,  Bulgaria,  Czechia, 
Denmark,  Germany,  Hungary,  Ireland,  Poland,  Portugal  and  the  United  Kingdom) 

192 It does, however, recommend that no changes occur because: (i) this is primarily a matter for national 
offices  to  determine;  (ii)  it  may  not  be  politically  feasible  in  some  of  the  more  recent  EU  members  to 
switch their intellectual property infrastructure; and finally (iii) there may be a benefit in that it will assist 
in having a more experienced invalidation office. 
193  Articles  24-26  of  the  Regulation;  in  addition,  Title  VI  of  the  Regulation  (Articles  52-54)  deals  with 
invalidity  proceedings  at  the  EUIPO  and  Title  IX,  Section  2,  with  disputes  concerning  the  validity  of 
Community designs before Community design courts (Articles 84-87 of the Regulation). 
194 “Design Focus 2010 to 2019 Evolution”. 
195 EUIPO User Satisfaction Survey 2017, p.19.  

47 

 
                                                           
and those  Member  States  in  which  they  may  only  be  brought  before  a  judicial  body 
(e.g. Greece, Italy, the Benelux countries and Sweden)196.  

The substantive grounds for invalidation of  national registered designs are exhaustively 
enumerated  in  the  Directive  (Article  11(1)),  which  makes  a  distinction  between 
mandatory  and  optional  grounds  for  invalidity.  This  does  not  mean  that  all  mandatory 
grounds  are  examined  by  the  national  offices  that  offer  invalidity  proceedings.  Some 
grounds can only be invoked in court.  

The Legal Review reports that interviewees’ preference for office-based proceedings or 
the court system is determined by the levels of expertise available. Those in favour of the 
court  system  are  concerned  that  smaller  national  offices  lack  sufficient  expertise  in 
design  law.  Others  prefer  inexpensive  administrative  procedures,  which  are  more 
reassuring  to  individual  designers  or  SMEs197.  Applications  to  court  for  injunctions  or 
declarations  can  add  to  the  overall  transaction  costs  involved  in  obtaining  and 
maintaining  a  registered  design  in  the  EU.  The  subsequent  delay  can,  in  the  long  run, 
discourage innovation and commerce.  

The  Legal  Review  follows  the  latter  arguments  and  recommends  that  it  be  made 
mandatory  for  national  offices  to  offer  a  quick  and  inexpensive  invalidation  procedure 
such  as  already  done  in  the  area  of  trade  marks  in  the  context  of  the  recent  reform198. 
It further  recommends  that  cooperation  between  the  EUIPO  and  national  offices  be 
extended on this point, so as to mitigate the lack of expertise.  

The  results  from  the  Public  Consultation  show  that  harmonisation  of  the  approach  is 
desired.  Moreover,  litigation  costs  for  pursuing  infringement  cases/invalidity  cases  is 
considered  as  one  of  the  top  three  costs  of  having  a  design.  Respondents  stressed  the 
importance  of  introducing  quick  and  inexpensive  invalidity  proceedings  in  all  the 
national IP offices and see no reason why the situation for designs should differ from that 
of  trade  marks.  Also  many  public  authorities  are  in  favour  of  introducing  mandatory 
invalidity proceedings on national level after having to implement such proceedings for 
trade marks. Those respondents who were against introducing mandatory administrative 
invalidity  proceedings  point  out  that  in  some  Member  States  so  few  designs  are 
invalidated  that  there  is  not  enough  experience  nor  demand  to  run  such  proceedings 
efficiently.  

The  non-availability  of  office-based  proceedings  for  the  invalidation  of  registered 
designs  in  a  part  of  the  EU  makes  the  design  system  at  national  level  unnecessarily 
inefficient and ineffective, and thus burdensome for businesses, in particular SMEs and 
individual  designers.  It  is  neither  coherent  with  the  RCD  system  nor  with  the  recently 
reformed trade mark acquis.  

196  However,  it  should  be  noted  that  of  those  IP  Office  who  do  not  provide  invalidity  procedures,  some 
provide  a  pre-grant  opposition  procedure  (e.g.  Portugal  and  Romania),  or  post-registration  opposition 
procedures  (e.g.  Finland,  Spain,  Lithuania),  or  even  both  invalidity  and  opposition  procedures  (e.g. 
Portugal and Poland). In addition, the Hungarian IP Office provides a procedure for a decision on lack of 
infringement and the Portuguese office provides for a procedure for alteration of a decision. 
197 In the industry survey, 25% of respondents (rising to 35% for non-automotive stakeholders) noted that 
the  different  grounds  for  invalidation  of  a  design  in  different  Member  States  presented  them  with 
difficulties when seeking to invalidate a design right. 
198  Article  45(1)  of  Directive  (EU)  2015/2436  obliges  Member  States  to  provide  for  an  efficient  and 
expeditious administrative procedure before their offices for the revocation or declaration of invalidity of a 
trade  mark.  According  to  Article  54(1),  Member  States  have  to  transpose  that  provision  by  14  January 
2023. 

48 

 
                                                           
Conclusions 

The  legislator’s  decision  to  provide  for  an  invalidity  procedure  before  the  EUIPO  has 
proven to be an efficient and effective way of guaranteeing a speedy and cost-effective 
way  to  register  with  a  minimum  of  administrative  burden.  This  has  contributed  to  the 
overall added value of the EU design protection system.  

However,  there  are  no  efficient  and  fast  administrative  procedures  for  declaring  a 
registered design invalid before several national offices. This shows a lack of coherence, 
and makes the procedure burdensome and expensive, especially for SMEs and individual 
designers that wish to object to designs that do not merit protection in certain countries. 

5.3.5.  Experience with the Community and national registration systems 

Electronic filing and other online services 

Applications  for  an  RCD  may  be  submitted  by  electronic  means,  including  the 
representation of the design, unless it concerns a filing of a specimen199. An RCD can be 
filed via the EUIPO’s  website200, which also  allows for the accelerated procedure  (‘fast 
track’).  This  procedure  allows  for  faster  treatment  of  an  application  if  it  complies  with 
certain  standards  and  no  deficiency  is  flagged  up.  Online  filings  not  only  simplify  the 
process, but also reduce the administrative costs for the EUIPO. 

It  is  also  possible  to  file  an  RCD  application  by  mail  or  fax201.  The  use  of  these 
possibilities is  very limited though,  and has  steadily decreased over the  years, reaching 
close to zero over the past 2 years (Fig. 8). Given the costs involved in making a system 
of  filing  by  mail  or  fax  available  and  its  very  limited  use,  the  usefulness  of  its  further 
maintenance seems questionable.    

Fig. 8 – Filing of RCD applications via website (e-filing), fax and mail 

Source: EUIPO data 

In  procedures  relating  to  Community  designs,  the  accepted  means  of  electronic 
communication with the EUIPO is the ‘User Area’. The User Area offers the option of 
receiving all communications from the Office electronically. For example, an application 
for a declaration of invalidity202, a request for renewal or a recordal may be filed with the 

199 Articles 65(2) and 67 of the Implementing Regulation.  
200 https://euipo.europa.eu/ohimportal/en/rcd-apply-now  
201 Articles 65 and 66 of the Implementing Regulation. 
202 The EUIPO launched the e-filing tool for invalidity requests in 2018, with great success – approx. 74% 
of invalidity requests were filled online in 2018, and approx. 93% in 2019. 

49 

 
 
                                                           
Office through the User Area. The EUIPO offers several online services203 that are also 
available to national IP offices as software modules (see Annex VI). 

Most  SMEs  that  have  gone  through  the  process  of  registering  IPRs  consider  the 
processes for registering Community designs to be particularly easy (Fig. 9)204. 

Fig. 9 – Difficulty of the IPR registration process 

Source: 2019 Intellectual Property SME Scoreboard 

Although most Member  States have an electronic system for filing design applications, 
this does not mean automatically that all their proceedings can be managed online. For 
example,  in  some  Member  States  it  is  not  possible  to  file  electronically  renewal 
applications or applications for a declaration of invalidity of a registered design.  

Filing to registration time  

In terms of application-process time, the EUIPO is very fast. In 2019, it took the EUIPO 
on  average  4  days  to  register  a  design  if  the  application  showed  no  deficiencies, 
compared with 12 working days in 2010 (Fig. 10). Some national offices do even better. 
The data received through the IPO questionnaire show that some offices only needed a 
few days to register an application if there are no deficiencies (i.e. the application meets 
all the formal and substantive requirements).  For example, the offices in Spain  and the 
United Kingdom registered applications on average in 2 and 3 days respectively in 2019. 
However,  other  offices  tend  to  take  much  more  time  to  process  an  application  (e.g. 
approx.  2  months  for  Sweden,  France,  Latvia  and  Estonia)  for  cases  without  any 
registration  problems.  Therefore,  for  multiple  jurisdictional  applications,  it  may  take 
quite some time before a design is duly registered in different jurisdictions (especially in 

203 https://euipo.europa.eu/ohimportal/en/online-services  
204  2019  Intellectual  Property  SME  Scoreboard,  European  Observatory  on  Infringements  of  Intellectual 
Property Rights, p. 81. 

50 

 
 
                                                           
those  cases  where  the  application  does  not  meet  all  the  formal  and  substantive 
requirements, where registration may even take as long as a year). 

The  enormous  differences  in  the  time  between  filing  and  registration  between  the 
different  Member  States  put  applicants  in  slower  jurisdictions  at  a  disadvantage  and 
hamper multi-jurisdictional filings. It could be explored how the registration time can be 
improved in certain Member States to make the system more efficient overall.  

Fig. 10 – Direct RCD registration timeliness 

Source: EUIPO design focus 2010 to 2019 evolution, p. 19. 

Deficiencies and registration rate 

If the application complies with all formal and substantive requirements, the design will 
be registered and published immediately. However, if an application has deficiencies the 
applicant will be asked to correct it, which may lead to the amendment of the application. 
In turn, this may lead to a delay in registration or, if the deficiency is not remedied, to its 
final  refusal.  Since  the  launch  of  the  RCD  system,  on  average  almost  1  in  5  examined 
direct  RCD  filings  were  deficient  (Fig.  11)205.  Design  applications  from  applicants 
assisted by a professional representative tend to have fewer deficiencies when compared 
with applications from applicants without a representative206.  

The registration rate reflects the share of applications that are finally registered out of the 
total  number  of  designs  applied  for.  The  EUIPO  had  an  average  registration  rate  of 
95.1% between 2010 and 2019207. Data from the IPO Questionnaire show similar results 
for some national offices, such as 97%, 98% and 100% in Slovenia, Hungary and Cyprus 

205  Please  note  that  the  deficiency  rate  is  counted  not  per  design  but  per  application,  including  multiple 
applications. In practice, this means that in cases where there is a deficiency for a single design contained 
in a  multiple filing, the entire multiple filing is considered to be deficient. In  other words, the deficiency 
rate per design is lower. 
206 Based on EUIPO data for 2010-2020: for applicants with a representative, 18.8% of their applications 
were  deficient;  for  applicants  without  a  representative,  30.6%  of  their  applications  were  deficient. 
Therefore,  applicants  without  a  representative  have  11.8  percentage  points  more  deficiencies.  In  other 
words, they are 1.63 times more likely to have a deficiency. 
207 EUIPO design focus 2010 to 2019 evolution. 

51 

 
 
                                                           
respectively, but also considerably lower rates in Poland (79%), Croatia (77%), Denmark 
(74,5%) and Romania (74%)for the years 2014 and 2015.  

Fig. 11 – Average deficiency rate examined direct RCD filings 

Source: EUIPO data 

Satisfaction with the registration process 

The respondents  to  the  Public Consultation  are  generally very satisfied  with  the design 
registration at the EUIPO. Its general performance is rated at 97% among all respondents. 
They  particularly  appreciate  the  possibility  of  filing  electronically;  the  speed  of  the 
registration process; the ease of the application process and forms; and its level of fees, 
which all show very high satisfaction levels208.  

Figures from the EUIPO’s most recent (2017) annual user satisfaction survey209 show that 
the satisfaction rate has significantly increased over time (Fig. 12). 

Fig. 12 – Overall satisfaction with RCD – Combined score* - Comparison over time 

Source: EUIPO User Satisfaction Survey 2017 

The respondents to the Public Consultation rated the general performance of the national 
offices less highly than that of the EUIPO, but still very highly (satisfaction rate of 79% 
among  all  respondents).  The  most  appreciated  features  were  the  possibility  of  filing 

208 Factual summary report, question 32. 
209 https://euipo.europa.eu/ohimportal/en/transparency-portal/organisational/user-satisfaction-survey 

52 

 
 
 
 
                                                           
electronically;  the  transparency  of  the  registration  process;  the  ease  of  the  application 
process and forms; the supplied information on how to register a design; and the level of 
fees210. 

Conclusions 

Users  are  very  satisfied  with  the  overall  functioning  of  the  two  parallel  registration 
systems. The high level of digitalisation of both the procedures and the communications 
for the RCD is particularly important for their efficiency. 

The  relatively  simple  and  fast  national  procedures  are  also  appreciated.  However,  in 
some  Member  States,  insufficient  automation  of  filing  systems  negatively  impacts  the 
speed  of  the  processing  of  incoming  applications,  undermining  the  effectiveness  and 
efficiency  of  the  current  framework.  Further  convergence  of  IP-office  practices  across 
the  EU  (in  particular  by  increasing  digitalisation)  could  be  considered  to  improve 
coherence. 

5.3.6.  Fees 

The costs of registering a design can be divided into the fixed administrative fees and the 
costs of legal assistance (which may vary significantly depending on applicants’ choice). 

Administrative fees for registering an RCD  

Community design applications are subject to various fees (Fig. 13), which the applicant 
must pay at the time of filing211, including the registration fee and the publication fee or, 
where the application includes a request for deferment of the publication, the deferment 
fee. For multiple applications, additional registration, publication or deferment fees must 
be paid for each additional design. If payment was not made when filing the application, 
late  payment  fees  must  also  be  paid.  There  is  no  distinction  in  fees  between  electronic 
and paper filings. 

Fig. 13 – The fee structure for RCDs 

Registration fee 

EUR 230 for a single design or the first design of a multiple application 

Multiple application 

EUR 115 for each design from the second to the tenth design  
EUR 50 for each design from the eleventh design onwards 

Publication fee 

EUR 120 for a single design or the first design of a multiple application 
EUR 60  per  design  for  the  second  to  the  tenth  design  and  EUR 30  from  the 
eleventh design onwards of a multiple application  

Deferment of 
publication 

EUR 40 for a single design or the first design of a multiple application 
EUR 20  per  design  for  the  second  to  the  tenth  design  and  EUR 10  from  the 
eleventh design onwards of a multiple application 

Renewal fee 

EUR 90 for the  first renewal, EUR 120 for the  second, EUR 150 for the third 
and EUR 180 for the fourth period of renewal 

Source: Regulation, the Implementing Regulation and the Fees Regulation 

210 Factual summary report, question 33. 
211 Article 6(1) of the Implementing Regulation. 

53 

 
                                                           
In practice this means that an applicant will have to pay a fee of EUR 350212 for a single 
Community design application, and, for example, EUR 1 050213 for a multiple application 
consisting of five designs.  

On average, about half (51.3%) of the total volume of RCD registrations are renewed at 
least once, and around a third (30%) at least twice.  

Applicants can also use the international registration system administered by the WIPO 
and  designate  the  EU  as  a  territory  of  protection  on  the  basis  of  an  international 
registration (‘IR’). In order to be able to designate the EU as a territory of protection, the 
applicant must have an international registration. The fee for designating the EU comes 
on top of the costs of the basic fee for the international registration. 

Although the Legal Review sees no need for a reduction of fees for RCD applications, it 
does  recommend  conducting  a  comprehensive  fee  review  to  ensure  the  coherence  and 
viability of the different (national, EU, and international) registration systems214.   

The  responses  to  the  Public  Consultation  are  in  line  with  the  recommendations  of  the 
Legal  Review.  Although  most  of  the  respondents  (79%)  think  that  the  current  level  of 
fees for RCDs is appropriate overall, some of the respondents  consider the level  of  the 
renewal  fees  to  be  too  high  –  especially  for  SMEs  or  single  designers215.  While 
a similarly high percentage of the respondents did not regard the current fee structure as 
problematic,  a  fifth  (22%)  believes  that  the  fee  structure  presents  some  difficulties. 
Among these difficulties, they indicate renewal fees, which should not increase each time 
a registered design is renewed.  

A slight majority of the respondents (56%) considers it inappropriate that all designs of 
a multiple  application  must  refer  to  products  in  the  same  Locarno  class  to  be  able  to 
benefit from the current  bulk discount (see also  Section 5.3.2).  Moreover, they  criticise 
the  fact  that  for  multiple  applications  the  renewal  fee  applies  to  each  and  every  single 
design contained in the multiple application, so that the bulk discount at the moment of 
filing  is  no  longer  available  once  the  design  is  registered.  In  that  context,  the  Legal 
Review points  out  that the current  multiple design fee structures tend to  benefit mostly 
larger entities216. The interests of smaller entities, and in particular SMEs and individual 
designers, should therefore be properly accounted for in any future review.  

Furthermore,  the  registration  fee  for  the  change  of  holder  is  considered  unjustified,  in 
particular since it does not exist for EU trade marks (see Section 5.7). Some respondents 
also  explicitly  supported  the  Legal  Review’s  recommendation  to  carry  out  a  more  in-
depth examination of the fee structure.   

Against this background, it could be useful to further explore the potential for increasing 
the  efficiency  of  the  Community  design  system  (especially  accessibility  for  SMEs  or 

212 EUR 230 (registration fee) + EUR 120 (publication fee) = EUR 350. 
213  EUR 230  (registration  for  the  first  design)  +  4  x  EUR 115  (registration  for  4  additional  designs)  + 
EUR 120  (publication  for  the  first  design)  +  4  x  EUR 60  (publication  for  additional  4  designs)  = 
EUR 1 050. 
214 More specifically, the Legal Review recommends reviewing the fee structure for multiple applications 
and renewal fees and aligning them with the fee structure of EU designations of international registrations 
(e.g. for IRs, each EU design renewal fee is only EUR 31 and the fees are not progressive over time). The 
Review also argues that all other fees set by the EUIPO should, for the convenience of both the public and 
the EUIPO, be aligned with their direct counterparts under the EUTM Regulation.    
215  Factual  summary  report,  questions  56,  57  and  58  (addressed  to  those  respondents  who  identified 
themselves i.a. as lawyers/legal advisers, authorities and academia). 
216 Legal Review, p. 49. 

54 

 
                                                           
single designers) by adjusting fee levels and streamlining the fee structure. Such a review 
should  take  into  account  the  need  to  ensure  a  balanced  EUIPO  budget  and  coexistence 
and complementarity between the Community design, national  design and international 
registration systems.  

Administrative fees for registering a national design right 

Since the Directive did not harmonise rules for fees or levels of fees, all Member States 
have their own fee system for registration of national designs. The application fees vary 
greatly between national offices. For example, in Estonia a single electronic filing of an 
application  for  registration  of  an  industrial  design  by  a  natural  person  costs  EUR 26, 
whereas in Finland a single electronic filing costs EUR 215. There does not seem to be 
a correlation between having a substantive examination and higher registration fees. 

The fees for additional designs in  a multiple application are mostly within the range of 
EUR 7-35,  but  there  are  some  exceptions  such  as  in  Sweden,  Finland,  Denmark,  the 
Benelux  countries  and  Slovenia,  where  fees  vary  between  EUR 65  and  EUR 140.  This 
can result in enormous price differences for multiple design applications per country. For 
example, the electronic filing of a multiple design application containing 10 designs costs 
EUR 120 in Germany, and EUR 1 285 in Finland. 

The  renewal  fees  can  also  differ  largely,  and  not  only  in  amount  but  also  in  structure. 
Some  Member  States  charge  the  same  fee  for  each  renewal  term217,  but  others  impose 
increasing fees218 like the EUIPO. For example, where France charges the same EUR 52 
for  any  renewal  period,  Poland  charges  EUR 58.40  for  the  first  renewal  period  and 
EUR 467.30 for the fourth renewal period for each design registered.  

Regardless  of  whether  the  fees  are  incremental  or  not,  statistics  from  the  IPO 
Questionnaire show that over time fewer designs are renewed.  In most Member States, 
around 20-30% of the total amount of design registrations that were filed originally are 
renewed after their  first  5  years. After that  first  renewal  period, there is  a clear decline 
except for Cyprus and Estonia, where in general a relatively high percentage of designs 
are renewed.  

It is not only the level of fees that can vary among the Member States. The composition 
of  the  fees  can  also  be  very  different.  Where  some  Member  States  require  publication 
fees for each additional design (e.g. in Croatia, Latvia and Sweden), or fees for entry in 
the  register  (Finland),  others  do  not  charge  such  additional  fees.  Moreover,  many 
Member States provide discounts for electronic filing219 and some provide fee reductions 
to  designers  (Croatia,  Latvia,  Czechia  and  Hungary)  or  natural  persons  (Lithuania  and 
Estonia)220.   

217  E.g.  Finland  charges  EUR 380  and  France  EUR 52;  Romania  charges  EUR 100  for  1-20  designs, 
EUR 125 for 21-50 designs and EUR 150 for 51-100 designs. 
218 E.g. Germany: EUR 90 for the 1st renewal, EUR 120 for the 2nd renewal, EUR 150 for the 3rd renewal 
and EUR 180 for the 4th renewal, Poland:  EUR 58.40 for the 1st renewal, EUR 116 for the 2nd renewal, 
EUR 233.60 for the 3rd renewal and EUR 467.30 for the 4th renewal for each design registered (also in a 
multiple application). 
219 Usually a 15-20% discount. 
220  HR:  the  applicant  who  is  also  the  designer  pays  fees  reduced  by  50%;  LV:  designers  applying  for  a 
design  who  are  (i)  individual  authors  have  to  pay  40%  of  the  respective  fees;  (ii)  pupils,  students  and 
pensioners  20%  of  the  respective  fees;  CZ:  the  fee  is  lower  where  the  author(s)  is  (are)  the  only 
applicant(s); HU: the fee is EUR 101 if the applicant is not the designer and EUR 25 if the applicant is the 
designer; LT: the amount of the fees for the filing of an application for a design will be reduced by 50% for 

55 

 
                                                           
 
Because  of  these  many  and  significant  differences,  while  taking  into  account  Member 
States’  freedom  to  determine  the  fees  of  national  designs,  it  could  be  a  good  idea  to 
further explore whether the setting of common principles for fee structures could help to 
optimise the system.  

Costs of legal assistance and representation 

Fees are often not the only costs involved in filing a design application. To a large extent, 
costs  are  also  determined  by  the  costs  of  legal  assistance  and  representation.  Levels  of 
lawyers’  fees  were  considered  a  significant  factor  when  deciding  on  the  type  of 
protection221.  Costs  of  legal  assistance  and  representation  are  not  fixed,  and  vary 
significantly on a case-by-case basis. While such costs cannot be compared, the applicant 
will incur them in those jurisdictions where representation by a professional is required 
by law. Where such a requirement does not exist, it is an applicant’s choice whether or 
not they want to invest resources in such representation. 
Although anyone can file an application for an RCD222, data from the EUIPO show that 
over the period 2010-2019, on average 85% of all RCD applicants were represented by a 
professional.  

Conclusions 

Applicants  appreciate the relatively low levels  of fees for RCD registrations. However, 
there is room for improving the fee structure to make it more efficient. In particular, it 
appears that due to the unity-of-class requirement the existing bulk discount available for 
multiple  applications  does  not  allow  applicants  to  appropriately  benefit  from  such 
multiple  filings.  It  also  appears  that  the  structure  of  the  bulk  discount  tends  to  benefit 
larger  companies  rather  than  SMEs  and  individual  designers.  In  addition,  the  renewal 
fees  appear  to  be  too  high  compared  to  the  application  fee.  Certain  other  fees 
(e.g. recordal of a transfer) also no longer appear to be justified or coherent. 

5.3.7.  Conclusions 

The  introduction  of  EU  design  legislation  has  substantially  improved  the  process  for 
registering  designs  in  the  EU.  Nevertheless,  there  are  some  issues  undermining  the 
effectiveness  of  the  existing  registration  procedures  that  should  be  addressed. 
In particular, the current legal framework for representing designs: (i) no longer satisfies 
applicants’ need to represent certain designs properly; and (ii) prevents the acceptance of 
new  types  of  designs.  The  widespread  requirement  that  designs  be  represented 
graphically  and  in  a  static  manner  is  not  in  line  with  current  ways  of  doing  business. 
This requirement is also not flexible enough to offer applicants the best possible option 
for identifying the protected subject-matter. Moreover, existing incoherence prevents the 
EUIPO  and  national  offices  from  promoting  the  convergence  of  practices,  and  forms 
a hindrance for applicants who apply for the same designs across the EU. 

natural persons who register an industrial design in their names; EE: filing of an application for registration 
of an industrial design by a natural person or solely natural persons is EUR 26 compared with EUR 105 for 
a legal person. 
221 Economic Review, p.6. 
222  Only  where  the  applicant  does  not  have  their  domicile  or  principal  place  of  business  or  a  real  and 
effective industrial or commercial establishment within the European Economic Area (EEA), they must be 
represented by a representative in all proceedings before the Office other than in filing an application. 

56 

 
                                                                                                                                                                            
The  system  for  registering  a  Community  design  allows  applicants  to  obtain  design 
protection  in  registered  form  for  the  whole  EU  area  through  one  application  to  the 
EUIPO using a single procedure under EU law. The system is prompt and has enormous 
cost advantages. The steadily growing number of Community design applications is clear 
evidence of its overall efficiency and relevance. The existing procedures for registering 
national designs are also considered relatively efficient. However, there is still room for 
improvement, in particular in: (i) the unity-of-class requirement for multiple applications; 
and (ii) making the proceedings more digital – or fully digital – on the national level.   

The  relevance  of  the  EU  legal  framework  for  design  protection  is  undermined  by  the 
current representation requirements, which have not been adapted to the digital age and 
need  to  be  updated.  Other  requirements,  such  as  for  paper  filing  and  the  filing  of 
specimens, have totally lost their relevance and could be discarded to simplify the system 
and reduce costs for IP offices. In addition, the very narrow scope of application of the 
Regulation’s exhibition-priority right has led to its very limited relevance. This is due to 
the  paucity  of  world  exhibitions  and  the  fact  that  such  exhibitions  do  not  involve 
business-to-business exchange. 

The lack of harmonised procedures to obtain, maintain or invalidate a design has resulted 
in  a  lack  of  coherence  in  procedural  rules  between  the  Member  States  and  the 
Community  design  system.  There  are  significant  divergences  in:  (i)  the  means  and 
requirements  for  representing  designs;  (ii)  the  types  of  fairs  covered  by  exhibition 
priority; (iii) the length of deferment periods; (iv) the level and structure of fees; (v) the 
applicable  examination  grounds;  and  (vi)  invalidity  proceedings.  Lack  of  alignment  of 
these rules undermines the complementarity and interoperability of the design protection 
systems in the EU, making it difficult for applicants to use the same filing material when 
filing in multiple jurisdictions.  

User  satisfaction  with  the  overall  performance  of  the  Community  and  national 
registration  systems  proves  the  clear  success  and  added  value  of  EU  legislation  on 
design protection. This user satisfaction also reflects the increasing economic importance 
that companies attribute to the protection of their designs. Without EU intervention, the 
acquisition  of  design  protection  across  the  EU  would  have  involved  much  higher  costs 
and greater administrative burden for companies. This would have hampered innovation, 
the development of new products, and investment in their production. 

Effectiveness 

Efficiency 

Relevance 

Coherence 

Means and 
requirements of 
design representation 
Different filing 
options 
Substantive 
examination 
Administrative 
invalidity 
proceedings 
Experience with the 
Community and 
national registration 
systems 
Fees 
Overall 

+ - 

+ - 

+ 

+ - 

+ 

N/A 
+ 

- - 

- - 

- 

- 

+ - 

- 
- - 

- -  

+ 

N/A 

N/A 

N/A 

N/A 
- 

+ - 

+ - 

+ 

+ - 

+ 

+ - 
+ - 

57 

EU added 
value 

N/A 

+ 

+ 

+ 

N/A 

N/A 
+ 

 
 
5.4.  ENFORCEMENT 

The  introduction  of  EU  legislation  on  design  protection  had  among  its  objectives  to 
improve  access  to  a  simple  and  affordable  design  protection  system  and  to  reduce 
transactional  and  litigation  costs.  To  accomplish  these  objectives,  the  Regulation 
provided for a common framework allowing for efficient design enforcement. Title IX of 
the  Regulation  contains  a  series  of  provisions  on  jurisdiction  and  procedure  in  legal 
actions relating to Community designs. These include rules on jurisdiction, Community 
design courts, sanctions in actions for infringement, and provisional measures.  

In addition,  measures,  procedures and remedies necessary to  ensure the enforcement  of 
intellectual  property  rights  (including  RCDs,  UCDs  and  national  design  rights)  in  civil 
and/or  administrative 
infringement  proceedings  are  harmonised  by  Directive 
2004/48/EC223  (‘Enforcement  Directive’).  The  recent  evaluation224  of  the  Enforcement 
Directive  concluded  that  the  means  set  out  in  this  Directive  have  effectively  helped  to 
better  protect  IPR  throughout  the  EU  and  are  still  fit  for  purpose.  The  Enforcement 
Directive  has  led  to  the  creation  of  a  common  legal  framework  where  the  same  set  of 
tools  is  applied  across  the  EU.  However,  it  was  considered  that  the  provisions  of  the 
Enforcement Directive were not implemented and applied in a uniform manner in all EU 
countries. Therefore, the Commission issued a Guidance Communication225 to clarify the 
application  of  certain  aspects  of the  Enforcement Directive,  and  thus  allow  for  more 
consistent and effective interpretation and application. The Commission, in cooperation 
with  the  Member  States  and  the  European  Observatory  on  the  infringements  of  IPR, 
continues to monitor the application of the Enforcement Directive. 
Means used in criminal proceedings have not been harmonised in the EU226. Rules on the 
enforcement  of  IPRs,  including  design  rights,  by  customs  authorities  are  set  out  in 
Regulation (EU) No 608/2013227.  

There is no harmonisation in administrative court fees, the costs of legal representation, 
and the obligation for legal representation before the Community design courts or other 
national  courts.  These  can  all  vary  significantly  depending  on  the  jurisdiction,  case  at 
hand, and representation strategy chosen by the right holder. These costs cannot therefore 
be analysed or compared in a meaningful manner. Having said that, design holders can 
incur  significant  costs  in  relation  to  the  enforcement  of  their  rights.  They  may  have  to 
invest  substantial  sums  to:  (i)  detect  an  infringement;  (ii)  identify  the  infringer; 
(iii) investigate  and  gather  evidence  of  infringement;  (iv)  secure  seizure,  and  (v)  store 
and ultimately destroy infringing goods. Also, because of the complexity of the matter, 
high-level technical expertise can be needed to understand the nature of the right and the 
scope of potential infringement228.  

223  Directive  2004/48/EC  of  the  European  Parliament  and  of  the  Council  of  29  April  2004  on  the 
enforcement of intellectual property rights, OJ L 157, 30.4.2004, pp. 16–25. 
224 Evaluation Report SWD(2017) 431. 
225 Guidance on certain aspects of Directive 2004/48/EC of the European Parliament and of the Council on 
the enforcement of intellectual property rights, COM(2017) 708. 
226  The  proposal  for  a  Directive  on  criminal  measures  aimed  at  ensuring  the  enforcement  of  intellectual 
property rights (COM/2005/0276) did not get sufficient support and was withdrawn by the Commission. 
227  Regulation  (EU)  No  608/2013  of  the  European  Parliament  and  of  the  Council  of  12  June  2013 
concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 
1383/2003, OJ L 181, 29.6.2013, pp. 15-34. 
228 Evaluation Report SWD(2017) 431, p. 17. 

58 

 
                                                           
The  quality  and  accessibility  of  enforcement  measures  across  the  EU  has  a  significant 
impact on the decision of whether or not to apply for registered protection of an industrial 
design in the first place. The greater the enforceability of an industrial design, the more 
likely a ﬁrm is to protect designs through this method, all else being equal229.  

5.4.1.  Design  rights  as  protection  tools  against  the  unlawful  behaviour  of  third 

parties 

As  part  of  the  evaluation,  stakeholders  were  asked  to  assess  the  effectiveness  and 
efficiency  of  using  design  rights  as  protection  tools  against  the  unlawful  behaviour  of 
third parties. 

Almost  all  of  the  respondents  to  the  Public  Consultation  considered  that  registered 
designs provide useful protection against unauthorised use by a third party. A majority of 
the  respondents  also  considered  that  the  UCD  provides  useful  legal  protection  against 
unauthorised copying. Among the respondents who launched infringement proceedings, 
most relied on the RCD as a basis for their legal action, followed by national registered 
through  WIPO,  and  UCD.  Those  few 
design, 
respondents,  who  indicated  that  they  rely  on  other  legal  bases,  referred  to  copyright 
protection,  the  law  against  unfair  competition  (passing  off),  protection  awarded  for 
figurative or 3D trade marks, national unregistered design right (UK), utility models, and 
patents. 

international  designs  registered 

The respondents  to  the survey  carried out  as part of the Economic Review had slightly 
different  preferences:  according  to  their  replies,  the  most  common  form  of  protection 
underpinning  legal  action  over  the  preceding  5  years  was  national  registered  industrial 
design right, followed by the RCD. Similar results were presented in literature230. 

Respondents  to  the  Public  Consultation  who  decided  to  rank  different  protection  tools 
estimated  that  relying  on  the  national  title  gives  them  the  best  chance  of  winning  an 
invalidity action or an infringement action. Their chances of winning were considered the 
lowest when the applicant relies on a UCD. Some respondents believed that the chances 
of success of an infringement and invalidity action before the courts are equal in relation 
to national design registrations and RCDs. Some respondents indicated that the chances 
of success are higher when the case is heard by a specialised IP court, as compared with a 
general court, independent from the protection title indicated as legal basis. 

Respondents  pointed  to  difficulties  with  enforcement  of  UCDs,  such  as  the  reversed 
burden of proof and high threshold of evidence required to prove that the contested use 
resulted  from  copying  the  protected  design.  In  that  context,  several  respondents 
considered that it would be useful to clarify the notion of ‘copying’ (Article 19(2) of the 
Regulation). Some respondents also believed that the necessity to disclose the design in 
the  EU  to  obtain  the  protection  based  on  a  UCD  is  a  burden  for  those  companies  who 
need to rely on a global marketing strategy231 (see Section 5.2.3).  

229 Economic Review, pp. 49 and 83. 
230 O. Church, E. Derclaye, G. Stupfler, ‘An empirical analysis of the design case law of the EU Member 
States’, International Review of Intellectual Property and Competition Law (IIC), July 2019. Based on the 
case  sample  examined  in  this  paper,  overall  there  is  more  litigation  based  on  national  registered  design 
rights than on RCDs. National registered design rights seem very popular overall compared to the RCD in 
countries which have a smaller market. In the UK, the national unregistered design right is very popular. 
231 Factual summary report, question 9. 

59 

 
                                                           
Stakeholders  involved  in  the  cooperation  under  the  Memorandum  of  Understanding  on 
the sale of counterfeit goods via the internet232 report233 that relying on design protection 
to defend against online sales of counterfeit goods is becoming increasingly important. 

The  feedback  received  demonstrates  that  stakeholders  appreciate  the  possibility  of 
relying on different types of design rights to protect their designs, as this gives them the 
possibility to adjust their protection strategy to the realities of the sector in which they are 
active.  Heavy  reliance  in  particular  on  the  RCD  proves  the  added  value  of  creating 
unitary protection.  

Finally,  there  is  no  alignment  between  the  scope  of  design  rights  and  the  trade  mark 
acquis concerning the possibility to enforce the design rights against goods in transit (as 
discussed in Section 5.2.4). This currently limits the scope of action of the IPR customs 
enforcement. 

5.4.2.  Functioning of the design enforcement system 

SMEs  report  that  design  rights  are  in  third  place  among  the  most  infringed  IPRs 
(Fig. 14)234. 

Fig. 14 – Top 5 infringed IPRs, according to SMEs 

Source: 2019 IP SME Scoreboard  

According  to  a  survey  carried  out  as  part  of  the  Economic  Review,  fewer  than  20% 
of respondents  have  initiated  a  legal  action  to  enforce  protection  of  their  designs. 
Enforcement  is  most  common  among  firms  in  the  field  of  manufacturing,  where  25% 
of respondents  had  initiated  such  a  process.  The  survey’s  results  show  that  design 
enforcement  is  more  common  in  Western  Europe  than  in  other  parts  of  the  EU. 
The Member States accounting for the highest proportion of initiated legal actions were 
Germany, France and the Netherlands. On the other hand, when we look at the countries 
in which respondents were subject to legal action, Germany, France and Czechia are the 
leading jurisdictions. 
Recent  academic  research235  demonstrates  that  France  has  by  far  the  most  design 
litigation compared to the other Member States; it also finds that UK has comparatively 

232 https://ec.europa.eu/growth/industry/policy/intellectual-property/enforcement/memorandum-
understanding-sale-counterfeit-goods-internet_en  
233 Report on the functioning of the Memorandum of Understanding on the sale of counterfeit goods via the 
internet SWD(2020) 166 final/2, pp. 13-14, 24, 38. 
234 2019 IP SME Scoreboard, p. 112. 

60 

 
 
                                                           
less  litigation  than  other  big  states  such  as  Italy,  France  and  Germany.  This  can 
potentially be explained by designers’ perception that the cost of litigation in the UK is 
high. 
The evaluation report for the Enforcement Directive236 assessed the average duration of 
civil  proceedings  for  infringement  of  IPRs  by  comparing  the  situation  in  four  selected 
Member  States  (France,  Germany,  the  Netherlands  and  the  United  Kingdom). 
The average duration of litigation related to all IPR types and to all of these four Member 
States was estimated to be about 1 year. In design infringement cases, the duration was 
estimated to be the longest in France with an average of 1.4 years, followed by the UK 
with 1 year, Germany with 0.5 years and the Netherlands with 0.1 years.  

Respondents  to  the  survey  conducted  as  part  of  the  Economic  Review  rated  their 
satisfaction  with  the  EU  design  enforcement  system  as  rather  low  (those  who  have 
initiated  legal  action  rated  it  4.8  out  of  10;  those  who  had  been  subject  to  legal  action 
rated it 3.3 out of 10). The companies that participated in this survey seem to still believe 
that  it  is  costly  and  time-consuming  to  enforce  industrial  designs  in  Europe,  and  that 
there is a lack of specialised training for courts and judges on intellectual property issues. 
The companies also seemed doubtful of their ability to enforce design rights outside the 
EU. The Economic Review summarises the strengths and weaknesses identified by firms 
with respect to enforcement of design rights (Fig. 15). 

Fig. 15 – Strengths and weaknesses of the design enforcement system 

Strengths 

Weaknesses 

and 

coherent 

  Clear 
national 
legislation  available  across  the  EU  with 
regards to design rights.   
 
In  some  countries,  a  specific  design 
can be protected both by design law and 
copyright  law  thus  rendering  it  more 
difficult to copy.  
  Steps have been taken to improve the 
harmonisation of requirements for – and 
enforcement of – design rights. 

to 

and 

and 

judges  on 

time-consuming 

training  for 
intellectual 

  Costly 
enforce an intellectual property right.  
  Lack  of  specialised 
courts 
property issues.  
  Unable 
outside the EU.  
  Lack  of  complete  EU  harmonisation 
of enforcement strategies across Member 
States. 

to  enforce  design  rights 

Source: Economic Review  

The  Economic  Review  concludes  that  there  remain  material  differences  in  the 
enforcement  of  design  rights  across  the  EU,  potentially  still  segmenting  the  single 
market.  It  refers  in  particular  to  the  fact  that  each  Member  State  has  its  own  judicial 
system  and  that,  despite  the  partial  harmonisation  achieved  thanks  to  the  Enforcement 
Directive, the requirements for evidence and the sanctions imposed vary from country to 
country.  Lack of harmonisation of measures, procedures and remedies  used in  criminal 
proceedings  is  another  sub-optimal  factor.  The  Legal  Review  mentions  two  additional 
aspects  that  may  threaten  to  undermine  the  unitary  nature  of  the  Community  design: 
(i) the differences among Member States regarding the level of difficulty in obtaining an 

235 E. Derclaye, ‘EU Design Law: Transitioning Towards Coherence? 15 Years of National Case Law’ in 
Bruun,  Dinwoodie,  Levin  and  Ohly  (eds),  Transition  and  Coherence  in  Intellectual  Property  Law, 
Cambridge University Press, 2019. 
236 SWD(2017) 431, p. 19. 

61 

 
                                                                                                                                                                            
ex  ante  injunction  to  restrain  the  infringement  of  a  design  right;  and  (ii)  the  lack  of 
harmonisation in respect of actions for a declaration for non-infringement (which exists 
only in some Member States)237.  

Against  this  background,  the  Economic  Review  called  for  further  progress  in  the 
standardisation  and  harmonisation  of  the  enforcement  measures  relevant  for  design 
protection.  The  Review  recommends  in  particular  further  harmonising  the  rules  on 
evidence and penalties, and further unifying the court system. It also advised monitoring 
the development of new technologies, and in particular 3D printing, as they seem likely 
to  lead  to  material  and  widespread  consumer-driven  infringements  in  the  future238  (see 
Section 5.2.4). Further harmonisation efforts are also supported by the conclusions of the 
Legal  Review.  These  conclusions  and  recommendations  have  been  taken  into 
consideration in the evaluation of the Enforcement Directive and are being monitored by 
the Commission in cooperation with the Member States.  
Recent  academic research239  examined the use of the design enforcement  system in  the 
EU,  bringing  interesting  conclusions  on  the  trends  observed  in  design  litigation  after 
analysing  over  2 000  court  decisions  in  cases  where  design  rights  were  litigated. 
The study concludes that EU design legislation has been effective over the ﬁrst 15 years 
of  its  existence.  Based  on  its  ﬁndings,  the  study  considers  that,  overall,  the  EU  design 
legal  framework  has  been  effective  for  all  types  of  design  rights,  making  the  current 
system well-suited to the different needs of the various design industries. The growing – 
and  then  stable  –  number  of  litigations  overall,  and  the  stable  proportion  of  litigations 
ﬁnding  designs  valid  and  infringed  over  time,  show  that  designers  have  relied  with 
conﬁdence  on  the  EU  design  legal  framework.  The  growing  number  of  design 
applications in the EU (see Section 5.3.2) might be explained by the generally good level 
of enforceability of designs. 

5.4.3.  Functioning of the Community design courts 

The Designs Regulation introduced an obligation for Member States to designate national 
courts and tribunals of first and second instance, which will be competent to hear cases 
concerning  RCDs  and  UCDs  (‘Community  design  courts’,  Article  80).  The  obligation 
refers  to  ‘as  limited  a  number  as  possible’  of  such  courts,  to  ensure  it  stimulates 
centralisation of proceedings and thus increased specialisation of courts. In practice, the 

237 Legal Review, pp. 105-107.  
238 Economic Review, pp. 115-125, 167-168. 
239 O. Church, E. Derclaye, G. Stupfler, ‘An empirical analysis of the design case law of the EU Member 
States’,  International  Review  of  Intellectual  Property  and  Competition  Law,  July  2019.  Among  the 
conclusions of the study the authors indicated i.a. that: (i) Vast majority (90.9%) of designs litigated upon 
are the three-dimensional designs; (ii) Designs are more likely to be found infringed than not infringed; and 
unregistered designs are more likely to be found infringed than registered designs; (iii) Decisions are more 
likely to be afﬁrmed than reversed on appeal. This suggests that ﬁrst instance courts generally have applied 
the  law correctly or at least that courts of appeal  were  not  minded to overrule the  lower court decisions. 
This also means that courts have agreed with claimants and that claimants have been likely to have their 
design rights found valid and infringed on appeal. Therefore, it has been worthwhile for parties to register 
or use designs as a type of protection for their creations, proving effectiveness of the EU system; (iv) The 
proportion of designs found valid by courts is stable over time, and likewise for the proportion of designs 
found infringed. The rate of validity and of decisions afﬁrmed on validity show that design right holders 
are generally conﬁdent that their designs are valid and are therefore not afraid to sue the alleged infringers. 
These ﬁndings go against those of the Economic Review which state that some designers may be reluctant 
to bring proceedings as they are uncertain of the validity of their designs. 

62 

 
                                                           
Member States designated from two – one of first instance and one of second instance – 
(majority of the Member States) to over 40 Community design courts (Italy)240.   

The Regulation also: (i) indicates the types of cases in which Community design courts 
have exclusive jurisdiction (Article 81); (ii) sets out rules making it possible to establish 
both jurisdiction over infringements and the validity of Community designs (Article 82, 
83);  and  (iii)  sets  out  other  rules  relevant  in  such  proceedings  (Article  84,  85,  86,  87), 
including on applicable law (Article 88). 

There  is  currently  no  obligation  on  the  Community  design  courts  to  provide  the 
Commission  with  information  about  the  cases  they  hear  (e.g.  volume  of  cases,  overall 
outcomes, etc.). It is therefore difficult to evaluate the effectiveness and efficiency of the 
Community  design  courts  system.  Lack  of  data  about  the  jurisprudence  in  the  IPR 
infringement cases was also one of the impeding factors indicated in the evaluation of the 
Enforcement Directive241.  

Some  respondents  to  the  Public  Consultation  indicated  that  the  chances  for  success  in 
design  infringement  proceedings  are  higher  when  the  case  is  heard  by  a  specialised  IP 
court, as compared with a general court, independent from the protection title indicated 
as a legal basis. While the feedback received in the framework of the Economic Review 
seems to indicate that firms still believe there is a lack of specialised training for courts 
and judges on intellectual property issues, the assessment of actual cases seems to point 
to a relatively high level of specialisation242.  

5.4.4.  Conclusions 

Enforcement of the design rights appears to be working reasonably well, contributing to 
the  overall  effectiveness  and  efficiency  of  the  design  protection  system.  Enforcement 
remains  highly  relevant,  with  the  existing  design  rights  considered  to  be  useful  and 
reliable  protection  tools.  The  possibility  of  choosing  between  different  types  of  rights 
(national/Community,  registered/unregistered)  also  seems  to  be  well  appreciated  by  the 
right holders from a rights-enforcement perspective.  

Although  judicial  recourse  is  widely  used  and  has  proven  to  be  effective,  there  is  still 
room  for  improving  its  efficiency  and  coherence.  For  the  sake  of  coherence  between 
different IPRs, means to achieve such improved efficiency and coherence should account 
for  the  follow-up  work  to  the  recent  evaluation  of  the  Enforcement  Directive  and  the 
Guidance  Communication.  Stakeholders  favour  further  harmonisation  and  would 
particularly appreciate better access to enforcement of design rights by reducing the cost 
of proceedings  and the time the proceedings take.  Lack of provisions that  would  allow 
enforcing  design  rights  against  goods  in  transit  (i)  limits  the  scope  of  action  for  IPR 
customs  enforcement,  and  (ii)  undermines  coherence  between  the  enforcement  tools 
available for trade marks and designs. 

240  Publication  of  the  lists  of  EU  trade  mark  courts  and  Community  design  courts  in  accordance  with 
Article  123(3)  of  Regulation  (EU)  2017/1001  of  the  European  Parliament  and  of  the  Council  on  the 
European  Union  trade  mark  and  Article  80(4)  of  Council  Regulation  (EC)  No  6/2002  on  Community 
designs 2020/C 327/06, OJ C 327, 5.10.2020, p. 6–15. 
241 Evaluation Report SWD(2017) 431, p. 7. 
242 O. Church, E. Derclaye, G. Stupfler, ‘An empirical analysis of the design case law of the EU Member 
States’,  International  Review  of  Intellectual  Property  and  Competition  Law  (IIC),  July  2019.  Data 
examined  as  part  of  this  research  show  that  most  of  the  judges  (68.1%)  hearing  design  cases  are 
specialised, i.e. are members of a court that is an intellectual property court or a court that has intellectual 
property in its competences and frequently renders decisions on intellectual property law. 

63 

 
                                                           
The  designation  of  Community  design  courts  brought  significant  added  value,  as  it 
promoted the specialisation of courts, a trend that should be further encouraged. 

Effectiveness 

Efficiency 

Relevance 

Coherence 

EU added 
value 

Design rights as 
protection tools 
against the 
unlawful behaviour 
of third parties  
Functioning of the 
design enforcement 
system 
Functioning of the 
Community design 
courts 
Overall 

5.5.  SPARE PARTS 

+ 

+ 

+ + 

+ 

+ 

+ + 

+ - 

+ + 

+ - 

+ 

+ 

+ 

+ + 

+ + 

+ - 

+ + 

+ 

+  

+ + 

+ + 

5.5.1.  Specific rules on spare parts used for repair purposes 

As explained in Section 5.2.2, design rights can protect the  appearance of the whole or 
part  of  a  product,  including  parts  intended  to  be  assembled  into  a  complex  product243. 
Component  parts  of  a  complex  product  can  only  be  protected  if,  once  they  have  been 
incorporated into the complex product, they remain visible during the normal use of the 
product244.  Design protection  cannot  be  granted  for  those  features  of  appearance  of 
a product which are solely dictated by its technical function, nor for the so-called must-
fit mechanical  interconnections245. These provisions  are particularly important  when we 
consider  protection  awarded  to  those  visible  parts  of  a  complex  product  that  are  being 
replaced for repair purposes (‘spare parts’). 

In  the  initial  1993  proposals  for  the  Regulation246  and  the  Directive247,  the  Commission 
proposed a so-called  repair clause, which would limit  to  3  years the design protection 
for  spare  parts  used  for  the  purpose  of  repair  to  restore  the  original  appearance  of 
a complex  product.  The  purpose  of  that  repair  clause  was  to  prevent  the  creation  of 
captive  markets  (i.e.  markets  where  consumers  face  a  severely  limited  number  of 
competitive suppliers) for certain spare parts, e.g. for cars248. In reaction to the Opinion of 
the European Parliament, the Commission presented in 1996 an amended proposal for the 
Directive249 with a repair clause reducing the design right to one of remuneration instead 
of limiting the term of protection. Because it was still not possible to reach agreement on 
the  repair  clause,  an  interim  compromise  solution  was  agreed  and  implemented  in  the 
final  text  of  the  Directive.  The  adoption  of  the  Regulation  3  years  later  had  to  take 

243  A  complex  product  is  defined  as  a  product  that  is  composed  of  multiple  components  which  can  be 
replaced permitting disassembly and reassembly of a product (Article 1 of the Directive and Article 3 of 
the Regulation). 
244 Article 3(3) of the Directive and Article 4(2) of the Regulation. 
245 Article 7(1) and (2) of the Directive and Article 8(1) and (2) of the Regulation. 
246 Proposal for a European Parliament and Council Regulation on the Community design,  COM(93) 342 
(final) at Article 23. 
247 Proposal for a European Parliament and Council Directive on the legal protection of designs, COM(93) 
344 (final) at Article 14. 
248 COM(93) 342 (final), p. 20. 
249 COM(96) 66 (final) at Article 14. 

64 

 
 
                                                           
account  of  that  interim  solution  by  also  including  an  interim  provision  in  its  final  text. 
Those interim provisions were designed to apply until amendments to the EU legislation 
are adopted based on new proposals from the Commission to address the issue of spare 
parts protection. 

The transitional provision included in the Directive (Article14) is often referred to as the 
‘freeze plus clause’. According to this provision, Member States are obliged to maintain 
in  force  their  existing  legal  provisions  relating  to  the  component  parts  of  complex 
products used for repair purposes; they can only change these provisions to liberalise the 
market for spare parts. 

The  transitional  provision  in  the  Regulation  (Article  110)  introduces  a  repair  clause  in 
a temporary  manner  (“pending  amendments  to  this  Regulation,  the  protection  as 
a Community design  shall not  exist for  a design  which constitutes a component  part of 
a complex product used for the purpose of repair of that complex product so as to restore 
its original appearance”). As a result, applying for a Community design (applicable in 
all Member States) will not grant protection for component parts used for the purposes of 
repair of complex products. As clarified by the CJEU250, for the repair clause to apply, the 
protected  design  does  not  have  to  be  dependent  upon  the  appearance  of  the  complex 
product.  However,  the  repair  clause  applies  only  to  component  parts  of  a  complex 
product that are visually identical to original parts251. 

In accordance with Article 18 of the Directive, the Commission presented in 2004 a new 
proposal to harmonise design protection of visible spare parts through the introduction of 
a  repair  clause,  in  language  very  similar  to  that  contained  in  Article  110  of  the 
Regulation.  It required  Member  States  to  also  exclude  visible  component  parts  used  to 
repair  a  complex  product  from  the  protection  awarded  by  national  design  rights. 
The proposed  introduction  of  such  a  repair  clause  was  coupled  with  an  obligation  for 
third-party sellers to clearly label their products, so as there would be no confusion as to 
their origin. The proposal aimed at improving the functioning of the internal market and 
allowing for more competition in the aftermarket, in particular access and participation of 
SMEs therein, with the benefit of greater choice and lower prices for consumers. Despite 
overwhelming  support  by  the  European  Parliament252,  the  proposal  did  not  receive 
sufficient support in the Council, and was eventually withdrawn in 2014. As a result, the 
transitional  provisions  of  the  Directive  and  the  Regulation  that  were  only  supposed  to 
serve as a temporary solution, remain binding for almost 20 years.  

Therefore, Member States still apply divergent rules on protection of spare parts in their 
national  law  (Fig.  16).  This  results  not  only  in  a  difference  in  the  scope  of  protection 
awarded  by  different  national  design  rights,  but  also  between  the  scope  of  protection 
awarded by the Community design rights and most national design rights.   

250 Judgment of the Court of 20 December 2017, joined cases C-397/16 and C-435/16 Acacia, para. 54: “… 
the  ‘repair’  clause  (…)  does  not  make  the  exclusion  of  protection  as  a  Community  design  for  a  design 
which constitutes a component part of a complex product which is used for the purpose of the repair of that 
complex product so as to restore its original appearance subject to the condition that the protected design 
is dependent upon the appearance of the complex product”. 
251 Ibidem, para. 75-78. 
252 European Parliament legislative resolution of 12 December 2007 on the proposal for a directive of the 
European Parliament and of the Council amending Directive 98/71/EC on the legal protection of designs 
(COM(2004)0582-C6-0119/2004-2004/0203(COD)). 

65 

 
 
 
                                                           
Fig. 16 – Rules on protection of spare parts in the EU 

Repair clause 
introduced 

Repair clause not 
introduced 

Shorter term of 
protection 

Other regime 

Belgium, Hungary, 
Ireland, Italy, 
Latvia, 
Luxembourg, 
Netherlands, Poland, 
Spain 

Austria, Bulgaria, Croatia, 
Cyprus, Czechia, Estonia, 
Finland, France, 
Germany253, Lithuania, 
Malta, Portugal, Romania, 
Slovenia, Slovakia 

Denmark, Sweden 
(15 years in both 
countries) 

Greece 
(repair clause combined 
with a five-year 
protection period and 
remuneration254) 

Source: Legal Review, Economic Review, own research 

5.5.2.  Segmented internal market for spare parts 

Diverging national rules that apply in different Member States led to a segmentation of 
the  internal  market  for  visible  spare  parts  in  the  EU.  As  indicated  in  the  Economic 
Review,  this  is  a  clear  and  straightforward  case  of  single-market  segmentation. 
It negatively impacts legal certainty and increases compliance costs for market operators.  

Both  the Economic Review255 and the  Legal  Review256 thoroughly examine the issue of 
visible spare parts protection, analysing whether the situation in the aftermarket for spare 
parts  requires  intervention,  and  if  so,  whether  it  is  more  advisable  to  carry  out  such 
intervention  within  the  remit  of  IP  law  (design  law,  but  also  copyright  law)  or 
competition  law  (in  particular,  by  introducing,  if  legally  feasible,  a  block  exemption 
regulation that would set out unacceptable practices in the spare parts aftermarket)257. 

The Economic Review considers that also introducing a repair clause for national design 
rights  is  likely  to  have  a negligible  impact  on  innovation.  The  economic  evidence  also 
suggests  that  there  is  no  broad  economic  justification  for  maintaining  spare  parts 
protection. The evidence further suggests that spare parts protection is leading to higher 
consumer prices in those Member States that did not introduce a repair clause, due to the 
dominance of original equipment manufacturers in the market for spare parts. 

According to the Legal Review, there is a clear fragmentation of the market, which is not 
likely  to  change  on  a  voluntary  basis  or  through  industry  self-regulation.  The  current 
situation is facilitative of neither the completion of the internal market for goods, nor the 
goal  of  conferring  equivalent  protection  on  right  holders.  The  Legal  Review  analyses 
different solutions to address the issue of protecting visible component parts if used for 
repair  purposes  of  a  complex  product258,  and  concludes  that  a  legislative  amendment  at 
EU level appears necessary. The Legal Review also recommends following the approach 

253 Germany is currently in the process of adopting a bill that will introduce a repair clause in the German 
national law. 
254  According  to  the  2004  Commission  proposal,  the  remuneration  system  has  never  been  implemented, 
because  the  vehicle  manufacturers  and  the  equipment  suppliers  have  never  been  able  to  agree  on  the 
amount of royalties. 
255 Economic Review, pp. 137-160. 
256 Legal Review, pp. 135-152, 163-165. 
257 Please also see para. 66 of the 2009 impact assessment report that preceded the entry into force of the 
current  Motor  Vehicle  Block  Exemption  Regulation:  “One  other  major  rigidity  exists  which  cannot  be 
satisfactorily removed by competition rules. Design protection for certain categories of spare parts […]”. 
258 These options are: (i) a limited term of protection, (ii) a compulsory licensing and remuneration system, 
(iii) liberalisation of the spare parts market, and (iv) maintaining the status quo. 

66 

 
 
                                                           
proposed by the Commission in 2004259. The Review also recommends clarifying that the 
repair  clause  only  applies  to  ‘must-match’  spare  parts,  and  that  it  does  not  translate  in 
enabling  third  parties  to  use  trade  marks  of  the  original  manufacturer260.  Regarding  the 
national  law  harmonisation,  the  Review  recommends  aligning  the  provisions  of  the 
Directive with those of the Regulation. 

The Legal Review also points to cumulative protection by design and copyright law, and 
the relevant case-law of the CJEU261. According to the Review, the likely outcome of the 
current  CJEU  case-law  is  that  component  parts  of  complex  products  that  pass  the 
protection  threshold  for  designs  will  also  probably  be  protectable  by  copyright  law. 
It recommends  extending  the  existing  repair  clause  within  EU  design  legislation  to 
copyright  law  to  prevent  liberalisation  efforts  being  undercut  by  the  effect  of 
‘cumulation’ with copyright262. 

The Information Society Directive263 (Article 5(3)(l)) gave Member States the possibility 
to introduce a copyright exception for use in connection with the demonstration or repair 
of equipment. However, only some Member States264 decided to introduce this exception 
in their legislation. Although it remains controversial whether this exception, as currently 
implemented by the Member States, could cover spare parts used for repair of any type of 
a  complex  product265,  the  alignment  of  exceptions  under  copyright  and  design  law  is 
supported in academic discourse266. 

Although  the  harmonisation  of  rules  on  spare  parts  protection  seems  to  be  widely 
supported by the different stakeholders, there continues to be no clear consensus as to an 
acceptable solution.  

A  vast  majority  of  the  respondents  to  the  Public  Consultation  considered  that  different 
rules on spare parts protection in the EU are a problem. The respondents explained that 
the  current  complexity  of  the  system,  based  on  divergent  approaches  of  the  Member 
States:  (i)  makes  it  difficult  for  companies  (SMEs  in  particular)  to  operate  across  the 
internal  market;  (ii)  leads  to  serious  obstacles  in  the  free  movement  of  goods;  and  (iii) 
involves  confusion  and  considerable  legal  uncertainty  both  for  professionals  and 
consumers.  The  respondents  believe  that  the  fragmentation  of  the  market  results  in: 

259 In particular, the Legal Review recommends that Article 110(1) of the Regulation should be re-cast as a 
defence  to  infringement  and  accordingly  moved  to  Article20(2)  to  clarify  its  effect  and  its  permanent 
status. 
260  In  line  with  the  CJEU  jurisprudence,  i.e.  Order  of  the  Court  of  6.10.2015,  Ford  Motor  Company,  C-
500/14, ECLI:EU:C:2015:680. 
261 Judgment of the Court of 27.1.2011, Flos, C-168/09, ECLI:EU:C:2011:29 – cumulation with copyright 
may  enable  an  extension  of  copyright  protection  for  spare  parts;  see  also  Judgment  of  the  Court  of 
21.06.2012, Donner, C-5/11, ECLI:EU:C:2012:370. 
262 See Legal Review in relation to the Regulation, p. 140: “It may be desirable to extend Article 110 to any 
copyright subsisting by virtue of Article 96(2)”. 
263  Directive  2001/29/EC  of  the  European  Parliament  and  of  the  Council  of  22  May  2001  on  the 
harmonisation  of  certain  aspects  of  copyright  and  related  rights  in  the  information  society,  OJ  L  167, 
22/06/2001 p. 10. 
264  Austria,  Croatia,  Czechia,  Germany,  Lithuania,  Malta,  Poland,  Romania,  Slovakia,  Slovenia  and  the 
UK. 
265  See  e.g.  L.  Bentley,  ‘The  Return  of  Industrial  Copyright?’  (2012)  19  University  of  Cambridge  Legal 
Studies  Research  Paper  Series  1,  36;  E  Derclaye,  ‘Doceram,  Cofemel  and  Brompton:  How  Does  the 
Current  and  Future  CJEU  Case  Law  Affect  Digital  Designs?’  in  Pasa  (ed),  Design,  technological  and 
digital innovation. Interdisciplinary proposals for reshaping legal protectionism, ESI Press, 2020. 
266 A. Kur, ‘Unite de l’art is here to stay – Cofemel and Its Consequences’ (2019) Max Planck Institute for 
Innovation and Competition Research Paper No. 19-16, p.16. 

67 

 
                                                           
(i) unequal chances for companies, notably SMEs; and (ii) different offerings of products 
available  to  consumers  across  the  Member  States.  There  was  unanimity  among  the 
respondents  that  the  rules  on  spare  parts  protection  should  be  the  same  throughout  the 
EU. Respondents stressed that common rules are a necessary pre-requisite for the proper 
functioning of the single market. 

Although  there  seemed  to  be  general  agreement  on  the  need  for  harmonisation  of  the 
rules, different groups of stakeholders presented different opinions on the direction such 
future harmonisation should take. The representatives of independent manufacturers and 
consumer  associations  argued  that  all  the  EU  Member  States  should  introduce  a  repair 
clause in their legislation. However, right holders’ representatives (including in particular 
original  equipment  manufacturers)  argued  against  this.  This  is  because  the  vested 
interests of these groups are diametrically opposed: car manufacturers who protect visible 
spare  parts  directly  benefit  from  this  protection,  while  the  independent  spare  parts 
producers suffer as a result of the protection267. 

Right  holders  mainly  argued  that  an  exclusion  of  repair  spare  parts  from  design 
protection is alien to the intellectual property system and not justifiable. It deprives the 
manufacturers of complex products (in particular cars) of a fair return on their investment 
and  eliminates  the  incentive  for  innovation.  Furthermore,  it  creates  difficulties  in 
efficiently  protecting  and  enforcing  their  rights  across  the  EU.  They  explained  that  the 
lack of harmonisation makes it necessary to file multiple national applications, which are 
both  burdensome  and  costly,  and  makes  understanding  of  the  system  difficult  for 
economic actors. In addition, in their view, the lack of harmonisation negatively impacts 
the efficiency of anti-counterfeiting strategies and favours forum shopping. 

Representatives  of  independent  producers  and  consumer  organisations  argued  that  the 
protection of ‘must-match’ spare parts constitutes an abuse of design protection, because 
it  contradicts  the  true  purpose  of  this  protection,  namely  to  foster  the  creation  of  new 
designs  through design innovation. Such protection in  countries  without a repair  clause 
implies  the  complete  elimination  of  competition  in  the  spare  parts  aftermarket.  It  also 
gives manufacturers of complex products (in particular vehicle manufacturers) an undue 
product monopoly. The existing patchwork of national legislations makes it difficult and 
costly  to:  ensure  compliance;  agree  on  licences;  set  out  distribution  networks;  and 
manage imports. Manufacturers in countries without a repair clause are disadvantaged, as 
they cannot produce spare parts to compete with companies operating in countries where 
the  market  has  been  liberalised,  including  countries  outside  the  EU.  The  lack  of  fair 
competition  in  countries  without  a  repair  clause  deprives  consumers  of  any  choice  and 
results  in  higher  prices  for  spare  parts.  Some  respondents  stressed  that  the  divergent 
existing  rules  make  it  difficult  for  customs  to  assess  the  infringing  (or  non-infringing) 
character  of  spare  parts  crossing  the  border,  and  in  particular  to  assess  the  purpose  for 
which these parts are being imported (i.e. for repair purposes or for other purposes).  

Finally, some respondents explained that Member States offer different interpretations of 
what  is  a  visible  motor  vehicle  spare  part  used  for  repair  purposes.  Another  issue 
discussed in the legal literature is whether consumable parts (e.g. a light bulb or a toner 
cartridge)  constitute  component  parts  of  complex  products,  given  that  the  complex 
product may still be considered complete without them, and that consumable parts can be 
typically considered products on their own, in some cases having a separate market. 

267 Factual summary report, questions 16 and 17. 

68 

 
                                                           
The discussion on spare parts protection is also of significant importance in view of the 
current  work  on  the  EU’s  green  transition,  in  particular  following  the  European  Green 
Deal268  and  the  Circular  Economy  Action  Plan269.  In  that  context,  the  Commission’s 
further work on Ecodesign and the right to repair should be monitored closely, to ensure 
coherence between measures proposed within these initiatives and the EU legislation on 
design protection. Although the work stream on Ecodesign focuses on the environmental 
performance  of  devices  (efficiency,  recyclability,  etc.),  it  also  sets  requirements  for  the 
availability of spare parts270. 

5.5.3.  Conclusions 

A  lack  of  uniform  rules  on  the  protection  of  visible  spare  parts  is  preventing  the 
completion  of  the  single  market  in  an  important  economic  area.  The transitional  rules 
provided in  the Directive have proven  ineffective  to  overcome the segmentation  of the 
internal  market,  undermining  the  overall  effectiveness  and  efficiency  of  the  design 
protection system. The freezing of the national status quo (permitting Member States to 
amend  their  design  laws  only  towards  liberalisation),  together  with  the  introduction  of 
a repair  clause  in  the  Regulation,  were  important  and  necessary  interim  steps  to  ensure 
interoperability between national systems and EU system. Nevertheless, these measures 
did not make it possible to achieve coherence and cannot be considered an appropriate 
final solution.   

In result, fair and effective competition is undermined (in particular, but not exclusively, 
in  the  automotive  aftermarket,  which  is  also  important  in  view  of  the  existing  antitrust 
block exemption rules for the automotive sector), with particular negative impact on the 
competitiveness  of  the  independent  repair  spare  parts  sector  (for  SMEs  in  particular). 
This  in  turn  leads  to  limited  choice  and  higher  prices  for  consumers,  and  negatively 
impacts product reparability, going against the objectives and development of the circular 
economy.  

Lack of complete harmonisation of the rules on protection of visible spare parts makes 
the assessment of the infringing character of goods difficult, in particular in the context 
of the related IPR customs enforcement. 

Effectiveness 

Efficiency 

Relevance 

Coherence 

‘Freeze plus’ 
clause in the 
Directive 
‘Repair 
clause’ in the 
Regulation 
Overall 

- 

+ -  

- 

- 

+ 

+ - 

- 

+ 

+ - 

- 

+ - 

- 

EU added 
value 

+ - 

+ + 

+ 

5.6.  INTERNATIONAL DIMENSION 

The EU framework on design protection is embedded in the international framework on 
design protection. It therefore has to take into account the international obligations under 

268 COM (2019) 640. 
269 COM (2020) 98. 
270 https://ec.europa.eu/commission/presscorner/detail/en/QANDA_19_5889  

69 

 
 
                                                           
the  WIPO  system,  such  as  the  existing  Hague  Agreement  and  the  Design  Law  Treaty 
currently under negotiation, as well as the World Trade Organisation agreements, such as 
the Agreement on Trade-Related Aspects  of  Intellectual Property Rights  (‘TRIPS’) and 
General Agreement on Tariffs and Trade (‘GATT’), and free trade agreements concluded 
by the EU with its trade partners. 

5.6.1.  Link to the international Hague agreement 

In 2006, the EU acceded to the Hague Agreement, linking the Community design system 
with the international design registration system of the WIPO. Under the Hague System 
applicants can obtain, via a single application, protection for a design in the EU and in 
countries  that  are  members  of  the  Hague  Agreement  concerning  the  international 
registration of industrial designs.  

This  accession  is  considered  useful  by  a  large  majority  (93%)  of  respondents  to  the 
Public Consultation. Reasons for this view include the saving of time and money and the 
reduced administrative burden (including less monitoring of national registrations). Some 
respondents,  even  though  they  were  in  favour  of  the  EU’s  accession,  mentioned  that 
improvements are needed, such as the harmonisation of the protection requirements and 
the number of views. 

A  large  majority  of  respondents  to  the  Public  Consultation  (77%)  are  in  favour  of  the 
accession of the Member States271 to the Hague Agreement. In addition to the advantages 
already identified above, respondents consider that this would allow for a better tailoring 
of their IP strategy (i.e. to target specific territories through national applications).  

A  slight  majority  of  respondents  to  the  Public  Consultation  considered  that  the 
international,  Community  and  national  design  systems  operated  well,  but  that  there 
remained  inconsistencies272.  The  main  inconsistency,  cited  by  several  respondents,  was 
the  representation  requirements  (e.g.  the  number  of  views  and  the  lack  of  harmonised 
representation approach).  

The accession of the EU to the Hague System has proved a success. The accession of the 
Member States to the Hague System should be considered and the main inconsistencies 
between the different systems should be addressed.  

5.6.2.  Conformity with the Design Law Treaty 

The  text  of  the  international  Design  Law  Treaty  (DLT)273  is  not  finalised,  pending  in 
particular  discussions  on  technical  assistance  and  disclosure  with  respect  to  traditional 
cultural  expressions,  traditional  knowledge,  or  biological/genetic  resources  used  or 
incorporated  in  industrial  design.  Similar  to  the  Singapore  Treaty  on  the  Law  of 
Trademarks274, the draft DLT aims at simplifying and harmonising administrative design 
registration standards and procedures. 

271  Only  eight  Member  States  have  not  acceded  to  the  Hague  Agreement  (namely,  Malta,  Portugal, 
Sweden, Slovakia, Cyprus,  Austria, Ireland and  Czechia) see the  list of contracting parties on the WIPO 
website. Some respondents consider that MS should be encouraged to accede to the Hague system while 
others consider that they should be required to do so. 
272 See Factual summary report. 
273  For  the  draft  articles  and  draft  regulations  as  published  for  the  SCT/35/2  (25  to  27  April  2016)  see: 
https://www.wipo.int/meetings/en/details.jsp?meeting_id=50415. 
274 For further information see: https://wipo.int/treaties/en/ip/singapore. 

70 

 
                                                           
Current EU legislation on design protection is not in conformity with the draft provisions 
of the DLT.  

For  example,  Article  12(2)  DLT  states  that  where  the  applicant  or  holder  has  failed  to 
comply with the time limit fixed by the office of a contracting party and that contracting 
party  does  not  provide  for  the  extension  of  a  time  limit  after  it  has  expired,  the 
contracting  party  must  provide  the  applicant  or  holder  with  the  possibility  of  filing 
a request  for  the  continuation  of  proceedings.  However,  in  contrast  also  to  the  EUTM 
Regulation,  the  Regulation  does  not  provide  for  the  option  of  the  continuation  of 
proceedings. 

With respect to other draft provisions of the DLT, it is less straightforward to conclude 
whether current EU legislation on designs (talking here about the legal framework for the 
RCD) is compatible or not. This matter therefore requires further thorough consideration 
for the purposes of a potential ratification of the DLT.   

5.7.  COHERENCE WITH THE TRADE MARK REFORM 

As  already  touched  upon  in  relation  to  certain  issues  of  substantive  law  (e.g.  goods  in 
transit in Section 5.2.4) and procedural law (e.g. administrative invalidity proceedings in 
Section  5.3.7),  the  recent  EUTM  reform  has  increased  significantly  the  level  of 
incoherence with existing EU legislation on design protection.  

This is most obvious with respect to the supplementary provisions concerning the EUIPO 
contained in Title XI of the Regulation (Articles 97 to 106). As the main provisions on 
governance  of  the  EUIPO  were  amended  in  the  EUTM  reform,  the  supplementary 
provisions  in  the  Regulation  have  become  outdated  and  need  to  be  aligned  with  the 
amended provisions in the EUTM Regulation as far as terminology and competences of 
the relevant Office organs are concerned. 

Furthermore,  the  degree  of  incoherence  has  clearly  further  increased  as  a  result  of  the 
numerous amendments to the EUTM legislation. This increase in incoherence comes on 
top  of  the  already  existing  differences  between  EUTM  proceedings  and  RCD 
proceedings  before  the  EUIPO,  which  are  mostly  the  inadvertent  consequences  of  the 
parallel legal framework for EUTM and RCDs. The resulting inconsistencies are causing 
friction  in  the  smooth  running  of  EUIPO  proceedings,  in  particular  in  terms  of  its 
workflows and back-office IT.  

Another  point  raised  by  respondents  to  the  Public  Consultation  was  the  differences  in 
practice  and  law,  which  are  also  detrimental  for  businesses  active  in  both  systems 
(EUTM and RCD), who rightly expect to encounter corresponding procedural provisions 
when not justified by the specificities of the IPR at hand.  

The following is merely a sample of the differences that exist:  

  the procedural provisions related to the place at which RCD applications may be filed;  

  the persons that can be a proprietor of an RCD; 

  the provisions regarding professional representation; 

  the means and rules of communicating with the EUIPO; 

  the legal instruments available in proceedings and their requisites; 

  the fees and costs that arise.  

71 

 
These  differences  hamper  the  overall  efforts  to  simplify  and  streamline  procedures 
managed by the EUIPO, limiting benefits for both the EUIPO and its user community.  

5.8.  COMPLIANCE WITH THE LISBON TREATY 

The Regulation,  the  Implementing Regulation  and the Fees Regulation  still  refer to  the 
‘Community design’. As a consequence of the entry into force of the Lisbon Treaty, this 
terminology needs to be updated.   

Furthermore,  the  Regulation  confers  in  its  Article  107  powers  on  the  Commission  in 
order to adopt necessary measures for implementing its provisions. Those measures are 
currently  laid  down  in  the  Implementing  Regulation  and  the  Fees  Regulation.  As  was 
already done with the EU legislation on trade marks in the recent trade mark reform, the 
entry  into  force  of  the  Lisbon  Treaty  also  makes  it  necessary  to  align  the  powers 
conferred upon the Commission under the Regulation with Articles 290 and 291 of the 
Treaty.  As  a  consequence  of  that  alignment  of  Commission  powers  with  the  Lisbon 
Treaty, the existing secondary legislation consisting of the Implementing Regulation and 
the  Fees  Regulation  will  have  to  be  substituted  by  the  enactment  of  implementing  and 
delegated  acts  adopted  on  the  basis  of  the  new  powers  to  be  conferred  upon  the 
Commission. 

5.9.  OVERALL CONCLUSIONS 

The  evaluation  shows  that  EU  legislation  on  design  protection:  (i)  is  working  well 
overall; (ii) has mostly met the evaluation criteria; and (iii) is still largely fit for purpose. 
This is especially true of the basic foundations and principles of EU design law, which 
have clearly stood the test of time. However, the evaluation has also revealed a number 
of  important  shortcomings,  which  need  to  be  addressed  to  complete  harmonisation, 
modernise  the  legal  framework  and  make  it  fit  to  support  both  the  digital  and  green 
transitions. 

More specifically, the evaluation showed that the objectives of EU legislation on design 
protection continue to be highly relevant in light of the substantial contribution made by 
design-intensive  industries  to  the  EU  economy.  The  role  of  design  in  making  products 
more  meaningful  to  customers  and  increasing  companies’  competitiveness  is  becoming 
more and more important. In addition, the significance of new technological designs such 
as graphical user interfaces and icons has grown dramatically. The steady increase in the 
number  of  design  registrations  with  the  EUIPO  proves  the  clear  success  of  the 
Community  design  system,  and  also  reflects  well  the  rising  economic  importance  of 
design protection.  

However, the evaluation also revealed indications of a possible underuse of design rights, 
in  part  due  to  a  lack  of  awareness  of  the  specific  design  protection  regime  and  its 
benefits.  The  evaluation  also  revealed  that  the  legislation’s  relevance  is  somewhat 
diminished  by  not  being  adapted  to  the  digital  age  in  various  areas  (e.g.  (i)  eligible 
subject-matter of protection; (ii) means of design representation; (iii) the scope of design 
rights;  and  (iii)  the  scope  of  the  private  use  limitation  in  the  context  of  3D  printing). 
In result, the current rules do not allow to properly account for new types of products and 
designs. 

In terms of effectiveness, the evaluation found that EU legislation on design protection 
has largely been successful in building a single market for products that embody designs. 
This  was  achieved  by  removing  significant  discrepancies  in  substantive  design  law, 
providing useful and reliable protection tools, and creating the unitary protection system. 

72 

 
The  unitary  protection  system  provided  access  to  simple  and  affordable  design 
protection,  and  thus  made  it  possible  to  reduce  the  costs  of  engaging  in  cross-border 
activities.  Provisions  on  design  protection  for  component  parts  used  for  the  repair  of 
complex  products  are  an  exception  in  this  regard.  Because  there  has  been  only  partial 
harmonisation in this area, the economically significant spare parts market continues to 
be  very  fragmented,  causing  considerable  legal  uncertainty  and  severely  distorting 
competition.  The  evaluation  also  brought  to  light  certain  shortcomings  that  appear  to 
limit  the  effectiveness  of  EU  legislation  on  design  protection.  These  include  the 
definition  of  the  eligible  subject-matter  of  protection,  gaps  in  the  scope  of  rights 
conferred (e.g. the inability to enforce design rights against counterfeit goods transiting 
through the EU), and an inadequate set of permissible uses within the list of limitations. 

On  efficiency,  it  has  not  been  possible  to  fully  quantify  the  costs  and  benefits  of  EU 
legislation  on  design  protection.  However,  the  evaluation  has  not  revealed  particularly 
high  or  disproportionate  costs,  and  there  is  no  doubt  that  the  costs  involved  in 
implementing both the Directive and the Regulation are outweighed by the benefits they 
have  brought.  In  particular,  the  unitary  registration  system  has  yielded  clear  and 
substantial  benefits  compared  to  multi-jurisdictional  filings  in  the  Member  States 
through:  (i)  lower  registration  costs;  (ii)  less  complexity  and  delay;  and  (iii)  greater 
transparency and predictability. Nonetheless, the evaluation highlighted certain elements 
of  the  Community  design  registration  system  that  seem  to  create  unnecessary 
administrative  burden  and  costs  for  its  users,  and  thus  reduce  the  system’s  efficiency. 
These elements include:  outdated requirements for the design representation;  the unity-
of-class requirement for multiple applications; and inappropriate fee levels and structure 
for RCDs (see Section 5.3.6).  

The  Directive  and  Regulation  are  coherent  with  each  other  to  a  high  degree  (both 
addressing  the  same  aspects  of  substantive  design  law  in  the  same  way).  However,  the 
lack  of  harmonisation  of  procedural  rules  under  the  Directive  has  resulted  in 
inconsistencies  between  the  Member  States  and  in  relation  to  the  Regulation.  This  has 
hindered the interoperability of the design protection systems in the EU. One example of 
this is  the lack  of obligatory  administrative procedures  for declaring  national  registered 
designs  invalid.  This  makes  it  burdensome  and  expensive  –  especially  for  SMEs  and 
individual designers – to object to designs that do not merit protection. In addition, the 
interaction between design law and copyright law remains unclear, raising serious doubts 
as  to  whether  the  principle  of  cumulative  protection  is  still  appropriately  addressed. 
The recent  trade  mark  reform  greatly  simplified  and  modernised  procedures  for  trade 
marks.  However,  this  reform  has  also  significantly  increased  the  level  of  incoherence 
between  EU  trade  mark  law  and  EU  legislation  on  design  protection  (see  Section  5.7), 
being  detrimental  to  overall  efficiency  in  EUIPO  procedures  and  limiting  cost  benefits 
for  both  the  EUIPO  and  its  user  community.  Finally,  the  evaluation  showed  that  EU 
legislation on design protection is not yet compliant with the Lisbon Treaty (see Section 
5.8). 

In  terms  of  added  value,  it  is  likely  that  without  the  Directive  and  the  Regulation 
national laws on design protection would have remained widely disparate. It is also likely 
that  this  would  have  severely  distorted  competition  and  resulted  in  a  very  fragmented 
internal market for goods embodying designs. Both the acquisition of design protection 
and  its  enforcement  across  the  EU  would  have  involved  much  higher  costs  and 
administrative  burden.  This  would  have  discouraged  design  excellence  in  the  EU,  and 
hampered the development of new products.  

Effectiveness 

Efficiency 

Relevance 

Coherence 

EU added 

73 

 
 
Protection 
tools 
Procedures 
Enforcement 
Spare parts 
Overall 

+ 

+ 
+ 
- 
+ 

N/A 

+ - 
+ 
+ - 
+ - 

+ - 

- 
+ + 
+ - 
+ - 

- 

- - 
+ 
- 
- 

value 

+ 

+ 
++ 
+ 
+ 

74 

 
ANNEX 1: PROCEDURAL INFORMATION 

1.  LEAD DG, DeCIDE PLANNING/CWP REFERENCES 

Lead DG: DG Internal Market, Industry, Entrepreneurship and SMEs 

2.  ORGANISATION AND TIMING 

The evaluation roadmap was published on 3 July 2018. It was followed by a consultation 
period that lasted from 3 to 31 July 2018. Eleven stakeholders submitted feedback275. 

The  Commission  held  a  public  consultation  from  3  December  2018  to  30  April  2019. 
This consultation was available on the Better Regulation Portal of the Commission and 
open  to  anyone  who  wished  to  reply.  The  public  consultation  received  196  replies 
through the EU survey and six via email.  

Simultaneously, the Commission sent a questionnaire to the Member States’ Intellectual 
Property Offices (IPOs) in December 2018. This questionnaire was sent to all Intellectual 
Property Offices of the Member States of which 24 offices responded.  

Finally,  on  9  December  2019  the  Commission  held  an  Expert  Group  on  Industrial 
Property Policy276 Meeting to discuss the evaluation of EU legislation on design. During 
that meeting, results of the questionnaire sent to IPO where discussed. 

The evaluation was carried out in cooperation with other Commission DGs in the context 
of  several  Inter-Service  Steering  Group  (‘ISSG’)  meetings.  The  following  DGs 
participated  in  the  ISSG:  DG  TRADE,  DG  CONNECT,  DG  ENV,  DG  ENER,  DG 
COMP,  JRC,  DG  TAXUD,  DG  JUST  together  with  the  Secretariat-General  and  the 
EUIPO. 

3.  EXCEPTIONS TO THE BETTER REGULATION GUIDELINES 

N/A 

4.  CONSULTATION OF THE RSB (IF APPLICABLE) 

N/A 

5.  EVIDENCE, SOURCES AND QUALITY 

The  design  evaluation  relies  on  several  sources.  First,  as  indicated  above,  the 
Commission held a public consultation and sent a questionnaire to IPOs. Results of both 
processes fed this evaluation report. 

The  evaluation  also  relies  on  different  studies,  considering  both  legal  and  economic 
aspects: 

  The  “Economic  Review  of  Industrial  Design  in  Europe”,  prepared  by  Europe 
Economics  and  published  in  January  2015277.  This  Economic  Review  provides  an 

275  More  information  on  the  following  website:  https://ec.europa.eu/info/law/better-regulation/have-your-
say/initiatives/1846-Evaluation-of-EU-legislation-on-design-protection  
276 More information about this expert group can be found here: 
https://ec.europa.eu/transparency/regexpert/index.cfm?do=groupDetail.groupDetail&groupID=3434. 

75 

 
 
                                                           
overview  of  design-intensive  industries  in  Europe,  of  the  type  of  IPR  being  used  to 
protect designs  and of the economic rationale behind using some IPRs more often than 
others.  It  also  assesses  whether  the  existing  legal  framework  fulfils  its  objectives,  i.e. 
constitutes  an  economically  effective  tool  that  facilitates  design  activities.  Finally,  the 
study  touches  upon  the  economic  consequences  of  the  non-harmonisation  of  the  rules 
governing  spare  parts  design  protection  in  Europe,  as  well  as  the  latest  developments 
related to design protection, e.g. 3D printing. 

In the framework of the Economic Review an online survey was conducted among those 
companies that develop designs in Europe. The response rate to the survey was some way 
below  the  total  of  1 000  responses  (with  36%  of  respondents  from  the  manufacturing 
industry, 35% from the trade or repair sector and 29% represented professional, scientific 
and technical activities). Further input from stakeholders was received through a series of 
structured interviews with WIPO and the EUIPO and four trade associations, one from 
the  textiles  industry,  one  from  the  furniture  industry  and  two  from  the  motor 
vehicles/spare parts industry).   

  The “Legal  review on industrial design protection  in Europe”278  was prepared by 
Time.lex, Spark Legal Network, Queen Mary University and Indiville and published on 
15  April  2016.  It  examines  whether  harmonisation  has  facilitated  the  system  of  design 
protection in the Internal Market. It assesses the dual system of design protection at both 
national  and  EU  level,  and  evaluates  its  contribution  to  the  Innovation  Union.  It  also 
considers  whether  the  current  legal  framework  requires  updating  in  light  of  the 
technological  advances  and  the  modern  requirements  of  users.  The  study  analyses  the 
need  for  further  harmonisation  within  and  beyond  the  scope  of  the  current  Design 
Directive. 

For this study two surveys were conducted and formed an intrinsic part of the stakeholder 
consultation.  The  purpose  of  the  surveys  was  to  flag  the  issues  of  most  concern  to 
industry stakeholders and other stakeholders in practice. The first survey was targeted at 
industry stakeholders of the design system, including national design associations, design 
companies and designers in 15 Member States279. In total 409 responses were received, of 
which 68% came from the automotive industry,  5% from  the textile industry, 7% from 
the  furniture  industry,  8%  from  the  electrical  goods  industry,  15%  represented  the 
services sector, 7% the mechanical manufacturing industry and 3% represented the rest 
category.  The  second  survey  was  addressed  to  a  more  defined  group  of  stakeholders 
within  the  design  system,  namely  national  enforcement  authorities,  IP  offices,  OHIM, 
WIPO,  legal  practitioners  and  judges  and  received  28  responses280.  The  outcome  of  the 
surveys was then used as the basis for further data gathering via stakeholder interviews 
targeting again both industry stakeholder and legal & institutional stakeholders. 

277  The  Review  is  available  on  the  following  link:  https://ec.europa.eu/growth/content/economic-review-
industrial-design-europe-0_en  
278  The  Review  is  available  on  the  following  link:  https://ec.europa.eu/growth/content/legal-review-
industrial-design-protection-europe-0_en  
279  Austria,  Czechia,  Denmark,  France,  Germany,  Italy,  Lithuania,  Luxembourg,  Netherlands,  Poland, 
Portugal, Slovenia, Spain, Sweden and the United Kingdom. 
280 See for more information about the applied method of gathering information and data, pages 20-22 of 
the Legal Review and Annex II to the Legal Review, pages 4-12. 

76 

 
                                                                                                                                                                            
  The  “Study  on  the  Intellectual  Property  implications  of  the  development  of 
industrial 3D printing”281 was commissioned to Bournemouth University and published 
on  15  April  2020.  The  aim  of  this  Study  was  to  analyse  the  IP  implications  of  the 
development of industrial 3D printing and clarify how the existing IP framework brings 
protection  to  IP  rights  holders.  It  identifies  potential  challenges  and  how  they  can  be 
removed and opportunities in need of clarification in order to aid the competitiveness of 
the  Additive  Manufacturing  sector  in  Europe.  The  focus  is  on  seven  industrial 
applications  of  Additive  Manufacturing:  health,  aerospace,  automotive,  consumer 
goods/electronics,  energy,  industrial  equipment  and  tooling  and  construction  and 
building  sectors.  This  report  identifies  the  pertinent  IP  considerations  according  to 
different  elements  in  the  3D  printing  process,  i.e.  designing  a  CAD  file,  using  and 
sharing  a  CAD  file,  printing  the  CAD  file,  distributing  the  printed  good  and  finally, 
licensing it. 

The Commission also relied on the Expert Group on Industrial Property Policy Meeting 
as mentioned above. The Commission worked in close relationship with the EUIPO and 
benefited from its expertise when carrying this evaluation report. The Commission also 
participated in multiple stakeholder events, and had bilateral meetings with stakeholders 
to  hear  about  their  experiences  with  the  EU  legislation  on  design  protection  and  better 
understand  the  challenges  they  are  facing.  Finally,  the  Commission  relied  on  academic 
literature, as referenced in the evaluation report. 

281  The  Study 
/publication/e193a586-7f8c-11ea-aea8-01aa75ed71a1/language-en/format-PDF/source-124493516 

  https://op.europa.eu/en/publication-detail/-

is  available  on 

the  following 

link: 

77 

 
                                                           
ANNEX 2: STAKEHOLDER CONSULTATION – SYNOPSIS REPORT 

1.  Introduction 

In order to establish the degree to which Directive 98/71 and Regulation 6/2002 can still 
be  considered  fit  for  purpose  the  Commission  launched  a  comprehensive  evaluation  of 
the overall functioning of design protection systems in 2014.  

2.  Consultation activities 

In  the  framework  of  this  evaluation,  the  European  Commission  conducted  several 
targeted consultations and stakeholders interviews as part of two commissioned studies. 
These studies were “The Economic review  of industrial design in Europe”282 (hereafter: 
Economic Review) and “The Legal review on design protection in Europe”283 (hereafter: 
Legal Review).  

The  Economic  Review  was  prepared  by  Europe  Economics  and  published  in  January 
2015.  As  part  of  the  Economic  Review  an  online  survey  was  conducted  among  those 
companies that develop designs in Europe. The key purpose of the survey was to provide 
information on the development of designs and the rationale for the use of different types 
of  intellectual  property  rights  (IPRs)  to  protect  designs  by  different  companies.  It  also 
aimed  at  gathering  information  on  the  enforcement  of  industrial  designs  in  Europe  and 
the consequences of the non-harmonisation of spare parts legislation. The response rate 
to the survey was some way below the total of 1 000 responses. Some sectors were over-
represented  among  respondents,  especially  those  sectors  that  have  an  interest  in  the 
protection of visible spare parts. In total 36% of respondent came from the manufacturing 
industry, 35% from the trade or repair sector and 29% represented professional, scientific 
and technical activities. 29% of them came from Western284 Europe, 17% from Southern 
Europe, 14% from Central Europe, 4% from northern Europe and 36% of the responses 
could  not  be  attributed  to  a  particular  region285.  The  study  secured  further  input  from 
stakeholders through a series of structured interviews with WIPO, the EUIPO and four 
trade associations, one from the textiles industry, one from the furniture industry and two 
from the motor vehicles/spare parts industry.   

The  Legal  Review  was  prepared  by  Time.lex,  Spark  Legal  Network,  Queen  Mary 
University  and  Indiville  and  published  on  15  April  2016.  The  general  purpose  of  the 
study  was  to  analyse  whether  the  existing  EU  legal  framework  for  design  protection 
contributes to the Innovation Union strategy, which aims to create an innovation-friendly 
environment  that  makes  it  easier  for  ideas  to  be  turned  into  products  that  will  bring 
growth of the EU economy and jobs. It assesses the substantive and procedural rules of 
Community and national design rights and provides a coherent assessment of the current 
dual  design  protection  on  both  national  and  EU  level  in  the  EU.  For  this  study  two 

282 https://ec.europa.eu/growth/content/economic-review-industrial-design-europe-0_en. 
283 https://ec.europa.eu/growth/content/legal-review-industrial-design-protection-europe-0_en. 
284 Northern – Denmark, Finland, Sweden; Central – Bulgaria, Czechia, Estonia, Hungary, Latvia, Poland, 
Romania, Slovakia and Slovenia Western – Austria, Belgium, Germany, France, Ireland, Luxembourg, the 
Netherlands,  and  the  United  Kingdom;  Southern  –  Cyprus,  Spain,  Greece,  Croatia,  Italy,  Malta  and 
Portugal. 
285 See for more information about the applied method of gathering information and data, pages 11-19 of 
the Economic Review. 

78 

 
 
                                                           
surveys were conducted and formed an intrinsic part of the stakeholder consultation. The 
purpose  of  the  surveys  was  to  flag  the  issues  of  most  concern  to  industry  stakeholders 
and other stakeholders in practice. The first survey was targeted at industry stakeholders 
of  the  design  system,  including  national  design  associations,  design  companies  and 
designers  in  15  Member  States286.  In  total  409  responses  were  received,  of  which  68% 
came from the automotive industry, 5% from the textile industry, 7% from the furniture 
industry, 8% from the electrical goods industry, 15% represented the services sector, 7% 
the mechanical manufacturing industry and 3% represented the rest category. The second 
survey was addressed to a more defined group of stakeholders within the design system, 
namely  national  enforcement  authorities,  IP  offices,  EUIPO,  WIPO,  legal  practitioners 
and judges and received ultimately 28 responses287. The outcome of the surveys was used 
as  the  basis  for  further  data  gathering  via  stakeholder  interviews  targeting  again  both 
industry stakeholder and legal and institutional stakeholders. 

In  addition,  in  December  2018  the  Commission  sent  a  questionnaire  to  the  Member 
States’  Intellectual  Property  Offices  to  which  24  offices  responded.  The  questions 
concerned  the  Offices’  statistics  and  registration  processes.  The  results  were  discussed 
with  the  Member  States’  representatives  during  the  Commission  expert  Group  on 
Industrial Property288 (hereafter: GIPP) which was held on 9 December 2019.  

On  24  July  2019  the  European  Union  Intellectual  Property  Office  (EUIPO)  sent  the 
European Commission  an extensive report  containing numerous suggestions for a legal 
reform  of  the  Community  design  legal  framework289  based  on  its  experience  with 
administering the registered Community dDesign system.  

Finally,  from  18  December  2018  to  30  April  2019,  the  European  Commission  held  a 
public consultation290  to evaluate the performance of EU and national systems of design 
protection, and identify potential areas for improvement. This consultation was available 
on the  Better Regulation Portal of the Commission  and open to  anyone  who wished to 
reply.  The  public  consultation  received  196  replies  through  the  EU  survey  and  six  via 
email.  Two  thirds  of  all  answers  came  just  from  six  countries  (Germany,  Spain,  the 
United Kingdom, France, Belgium and Italy). Respondents attached 43 position papers to 
their  replies.  See  for  more  statistics  about  the  respondents  and  the  key  findings,  the 
Factual Summary report annexed to the Evaluation Report.   

3.  Analysis of responses 

General feedback  

Stakeholders  are  generally  positive  about  the  functioning  of  the  design  protection 
system in the EU, indicating throughout different consultations that it works considerably 
well.  Stakeholders  appreciate  the  predictability,  speed  and  cost  effectiveness  of  the 
system, the relatively high degree of harmonisation and useful complementarity between 
the  national  and  unitary  titles.  However,  the  stakeholders  also  point  to  some 

286  Austria,  Czechia,  Denmark,  France,  Germany,  Italy,  Lithuania,  Luxembourg,  Netherlands,  Poland, 
Portugal, Slovenia, Spain, Sweden and the United Kingdom. 
287 See for more information about the applied method of gathering information and data, pages 20-22 of 
the Legal Review and Annex II to the Legal Review, pages 4-12. 
288 https://ec.europa.eu/transparency/regexpert/index.cfm?do=groupDetail.groupDetail&groupID=3434  
289  Consisting  of  Council  Regulation  (EC)  No  6/2002 of  12 December  2001  on  Community  designs  (OJ 
2002 L 3, p. 1), Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Regulation 
No 6/2002 (OJ 2002 L 341, p. 28) and Commission Regulation (EC) No 2246/2002 of 16 December 2002 
on the fees payable to [the EUIPO]. 
290 https://ec.europa.eu/info/law/better-regulation/initiatives/ares-2018-3527248/public-consultation_en. 

79 

 
                                                           
shortcomings  that  should  be  remedied,  such  as  the  remaining  harmonisation  gaps  (e.g. 
rules on spare parts protection), or the need for modernising the protection system so that 
it is fully fit for the digital age.  

Protection tools 

Different  consultation  activities291  have  examined  how  designs  are  protected  and  the 
reasons  underlying  the  choice  to  opt  for  one  means  of  protection  rather  than  another. 
Results of the public consultation show that the most popular means of protection is the 
registered  Community  design  (‘RCD’).  National  designs  and  international  registrations 
are respectively the second and third preferred protection means. Although a decision to 
opt  for  a  specific  means  of  protection  relies  on  multiple  factors,  consultation  activities 
have identified two determinant factors, namely the territorial coverage of the protection 
and the fees. All Consultations show a lesser reliance on unregistered Community design 
(‘UCD’), compared to registered protection. However, this means of protection retains its 
attractiveness with stakeholders mentioning as key advantages the avoidance of fees and 
the lack of formalities.  Finally, it appears that the uptake of registered  designs  remains 
low compared to other IPRs. Consultation activities indicate that this can be explained by 
the lack of awareness around designs and the fact that protection provided by IPRs can in 
certain circumstance be sufficient. 

Results  of  the  Public  Consultation  show  that  the  definitions  and  protection 
requirements  appear  effective  and  relevant.  However,  the  consultation  activities  have 
identified  some  room  for  clarification.  First,  although  the  notion  of  a  ‘product’  is 
generally considered clear, some stakeholders consider it should be adapted to the needs 
of emerging industry sectors (to include e.g. virtual and animated designs). Second, both 
the  surveys  conducted  as  part  of  the  legal  review  and  the  results  of  the  Public 
Consultation  show  that  the  applicability  and  assessment  of  the  visibility  requirement 
should  be  clarified.  Third,  results  of  the  Public  Consultation  show  that  the  scope  of 
protection is not clear. In particular, concepts used to determine the scope of protection 
(i.e.  ‘informed  user’,  ‘individual  character’  and  ‘different  overall  impression’)  appear 
abstract  and thus  unclear. Finally,  a majority of stakeholders considered it important  to 
harmonise the extent to which product indication determinates the scope of protection.  

As regards the commencement of the protection, some stakeholders indicated that there 
is  legal  uncertainty  –  and  thus  need  for  clarity  –  as  regards  the  relevant  geographical 
location of the disclosure for the creation of a UCD. However, stakeholders’ views are 
divided  as  to  the  solution.  The  EUIPO,  on  the  other  hand,  has  taken  the  clear  position 
that disclosure must take place within the territory of the EU in order to create a UCD. 

In  general  the consultation activities show that the  rights conferred on the holder of a 
design right do not appear to cause any major difficulty apart from the following issues. 
The  first  relates  to  3D  printing,  where  stakeholders  are  divided  as  to  whether  design 
rights  provide  sufficient  protection  against  copying  a  protected  design  by  means  of  3D 
printing. The study “Intellectual Property Implications of the Development of Industrial 
3D Printing”292 and results of the Public Consultation provide several avenues to address 
legal  uncertainty  around  designs  and  3D  printing  (i.e.  extension  of  the  scope  of  design 
rights, introduction of an indirect infringement and review of the private use limitation). 

291 Including in particular the Economic Review and the Public Consultation. 
292  The  European  Commission  published  on  15/04/2020  a  more  general  IP  study  on  the  “Intellectual 
Property Implications of the Development of Industrial 3D Printing ”, which also touches upon design and 
thus further feeds in the evaluation work. 

80 

 
                                                           
A  survey  conducted  as  part  of  the  Legal  Review  addressed  the  specific  issue  of  fair 
compensation in the context of 3D printing. Views were divided on the question (except 
for  the  interviewed  French  automotive  manufacturers  who  were  in  favour  of  fair 
compensation).  The  second  identified  issue  relates  to  goods  in  transit.  A  majority  of 
stakeholders are in favour of enlarging the scope of design rights as to prohibit the transit 
of goods that are infringing design rights registered in the EU through the EU territory, 
even if the goods are not intended to be placed on the EU market. Thirdly, the feedback 
received through the Public Consultation pointed to the narrow catalogue of limitations 
to  the  rights  of  design  holders  (compared  to  copyright)  and  the  recent  judicial 
interpretation293  given  to  the  quotation  limitation.  Some  respondents  to  the  Public 
Consultation  also  expressed  their  concerns  as  to  the  possible  reach  of  the  private  use 
limitation,  in  particular  when  considering  technological  developments  such  as  3D 
printing. 

Respondents  to  the  Public  Consultation  generally  consider  the  25-year  term  of 
protection  of  RCD  to  be  adequate.  Only  a  slight  majority  of  respondents  consider  the 
term  of  protection  of  a  UCD  to  be  adequate.  Regarding  national  registered  designs, 
results of the IPO Questionnaire showed that a few Member States operate with an initial 
term of 10 years, with three renewal periods, each of 5 years (instead of an initial term of 
five years). 

Results of the Public Consultation show that some stakeholders consider the interaction 
between  copyright  and  design  law  to  be  unclear  and  potentially  leading  to  a  smaller 
reliance on design protection. It has to be noted that the Cofemel decision of the Court of 
Justice294  was  rendered  after  the  closure  of  the  Public  Consultation  and  that,  although 
some respondents referred to it, they could not react to the judgment itself. Nevertheless, 
the results show that an unclear relationship between designs and copyright law can also 
lead to a circumvention of one right by another.  

The interaction between design law and trade marks appears to be less problematic in 
view of the replies to the Public Consultation. Because of the possible overlap between 
designs  and  figurative  and  shape  marks,  some  stakeholders  highlighted  the  need  to 
further  harmonise  trade  marks  and  design  law  (e.g.  harmonising  invalidity  grounds, 
alignment of the calculation of renewal dates, etc.). Here again, this is meant to avoid the 
circumvention of one right by the other. 

Finally, the EUIPO raised the issue of the interaction between designs and patents and 
utility  models.  The  EUIPO  noted  in  that  respect  that  a  relevant  proportion  of  RCD 
mainly concerns a technical solution rather than an aesthetic consideration.   

Procedures 

The  responses  to  the  Public  Consultation  show  that  overall  the  users  are  very  satisfied 
with  the  design  registration  at  the  EUIPO  with  a  general  performance  rate  of  97% 
among  all  respondents.  The  general  performance  of  the  national  offices  is  not  rated  as 
high  as  that  of  the  EUIPO,  but  still  good  with  a  percentage  of  79%of  all  respondents. 
With  regard  to  both  the  Community  and  national  registration  systems,  stakeholders 
particularly  appreciate  the  possibility  to  file  electronically.  However,  the  stakeholders 
also point to several aspects of the registration procedures that should be remedied.  

293 Judgment of the Court, 27.9.2017, joined cases C-24/16 and C-25/16. 
294  Judgment  of  the  Court,  12.9.2019,  C-683/17.  This  judgement  touches  upon  the  issue  of  interaction 
between copyright and design right. 

81 

 
                                                           
For  instance,  different  consultation  activities  show  that  further  harmonisation  of  the 
current requirements for the representation of national designs would be desirable in 
order to remove existing legal constraints in better defining the scope of protection of a 
design.  The  most  criticised  requirements  were  the  permitted  number  of  seven 
perspectives  of  a  Community  design  application  and  the  limited  means  of  representing 
the  design.  Stakeholders  consider  that  the  maximum  of  seven  views  to  represent  a 
design is insufficient to represent some types of designs, for instance to show details of a 
multi-position or motion design, and can create  problems when claiming priority rights 
for the same design in other jurisdictions. The EUIPO and numerous respondents to the 
Public  Consultation,  therefore,  recommended  to  increase  the  number  of  views  with  a 
view to facilitating the filing of designs and increasing legal certainty. 

Currently the legally accepted means to represent a design are limited to static views. 
Respondents to the public consultation and the EUIPO point out that this restriction may 
lead to problems in defining the scope of protection of certain types of designs, as certain 
qualities  of  designs  of  modular  systems  or  designs  that  show  a  set  sequence  or 
movement,  might  not  necessarily  be  visible  in  a  line  drawing.  They,  therefore,  suggest 
that other means of representation should be allowed to protect a wider range of designs 
or  designs  more  effectively.  For  instance,  design  protection  should  also  be  made 
available for manifestations that are not  physically defined as two or three-dimensional 
objects  (e.g. animated designs  and  graphical user interfaces) by  widening the notion of 
product to other types of designs. 

Due to this need for more modern means of representing designs, also the possibility to 
substitute  the  graphic  or  photographic  reproduction  of  a  design  by  a  specimen,  is 
considered  by  a  majority  of  the  respondents  to  the  Public  Consultation  as  well  as  the 
EUIPO as an obsolete option in a time of online deposits. 

Finally, some respondents to the Public Consultation pointed to the fact that there are no 
rules  on  disclaimers  indicating  which  features  of  a  design  are  not  intended  to  be 
protected.  They  therefore  suggest  exploring  ways  to  make  possible  a  description  as  an 
interpretative,  or  even  as  a  decisive  factor  (e.g.  as  a  verbal  disclaimer)  for  determining 
the  subject-matter  of  protection.  The  EUIPO,  on  the  other  hand,  suggests  to  legally 
acknowledge  the  use  of  visual  disclaimers,  as  agreed  between  the  EUIPO  and  national 
offices in their Common Practice.  

Other  registration  aspects  considered  in  need  for  improvement  included  some  of  the 
filing options. One of these options allows applicants who have displayed their design at 
certain trade fairs to claim exhibition priority. This right has the effect that the date on 
which the design was displayed at an officially recognised exhibition, will count as the 
date of filing of the design application for the purposes of establishing which rights take 
precedence. For Community designs this right is essentially limited to world exhibitions 
and does not cover display at other, national or international, exhibitions. This limitation 
was criticised by quite a number of respondents to the Public Consultation representing 
the  exhibition  industries,  who  called  for  aligning  the  Community  design  regime  with 
broader national standards accepting exhibition certificates from other trade fairs. They, 
furthermore, considered the lack of harmonisation of priority certificates issued by trade 
fair  organisers  as  an  issue,  which  negatively  influences  the  complementarity  and 
interoperability between the Community and national design systems.  

Another  filing  option  provided  for  by  the  Regulation  and  various  Member  States  and 
intended to benefit applicants who want to further develop their marketing strategy or to 
finalise  preparations  for  production  in  secret,  is  the  right  to  request  deferment  of 

82 

 
publication. Due to existing divergences in national laws, e.g. in terms of duration of the 
deferral period, a clear majority of respondents to the Public Consultation is in favour of 
harmonisation  of the rules on deferment  of publication, and some suggest  to  make this 
option mandatory at national level. 

Lastly,  the  Regulation  and  most  national  laws  give  applicants  the  right  to  combine 
multiple designs in a single application under the condition that these designs must be 
applied  for  products  that  belong  to  the  same  class  of  the  Locarno  Classification. 
According to  the results  of the Public Consultation,  respondents  consider this so-called 
“unity of class” requirement the most inappropriately rigid and burdensome requirement 
of the Regulation and of the Implementing Regulation. Moreover, the EUIPO reports that 
it gives rise to many deficiencies and hampers the rationale pursued, namely to ease the 
registrations  of  several  designs  in  a  single  application  for  users  and  the  EUIPO  alike. 
Therefore, many stakeholders are in favour of abolishing this requirement. 

On a more positive note, the results of the Public Consultation  show that a majority of 
the respondents sees no need to change the current limited substantive examination of 
design by the EUIPO, which does not include the assessment of novelty and individual 
character of a design.  They  are of the opinion that  the main advantage  of the system  – 
quick  and  efficient  registration  –  should  not  be  impaired  and  see  more  benefits  in 
optional  searches  or  better  tools  to  conduct  image  searches  themselves.  On  the  other 
hand,  a  minority  of  respondents  argues  that  too  many  designs  lacking  novelty  and 
individual character are being registered though, which goes against legal certainty and 
leads  to  unjust  situations  in  court.  On  a  national  level,  where  a  great  divergence  in 
examination  grounds  exists,  respondents  to  the  Public  Consultation  would  welcome 
harmonisation of the different national substantive examination procedures.  

Stakeholders  are  also  positive  about  the  EUIPO’s  procedure  to  declare  a  registered 
design  invalid.  Feedback  to  the  Public  Consultation  shows  that  82%  of  all  respondents 
are overall satisfied with such invalidity proceedings at the EUIPO. On a national level, 
office-based  invalidity  proceedings  are  not  available  in  all  Member  States,  some  only 
offering  invalidity  proceedings  before  a  judicial  body.    The  results  from  the  Public 
Consultation  show  that  harmonisation  of  the  approach  is  desired.  Moreover,  litigation 
costs  for  pursuing  infringement  cases/invalidity  cases  is  considered  as  one  of  the  top 
three  costs  of  having  a  design.  Therefore,  major  associations  of  right  holders  and 
representatives,  as  well  as  most  authorities,  are  in  favour  of  introducing  quick  and 
inexpensive invalidity proceedings before the office of each Member State. 

Another  important  aspect  of  the  procedures  are  the  fees  charged  by  the  offices  for 
acquiring  and  maintaining  registered  design  rights.  Although  a  majority  of  all 
respondents  to  the  Public  Consultation  thinks  that  the  current  fee  level  for  RCDs  is 
appropriate,  some  of  the  respondents  believe  that  the  fee  structure  presents  some 
difficulties.  Among  these  difficulties,  they  indicate  renewal  fees,  which  are  considered 
too  high,  especially  for  SMEs  or  single  designers,  and  should  not  increase  each  time  a 
registered  design  is  renewed.  Moreover,  some  respondents  point  out  that  for  multiple 
applications  the  renewal  fee  applies  to  each  and  every  single  design  contained  in  the 
multiple  application,  so  that  the  bulk  discount  at  the  moment  of  filing  no  longer  is 
available once the design is registered.   

Enforcement 

Stakeholders  consider  that  the  design  enforcement  system  is  working  reasonably  well. 
While they would welcome improvements on the general affordability and accessibility 
of  judicial  redress  and  further  harmonisation  of  the  enforcement  proceedings,  they 

83 

 
consider  the  existing  design  rights  to  be  useful  and  reliable  protection  tools.  The  right 
holders  appreciate  the  possibility  to  choose  between  different  types  of  rights 
(national/Community,  registered/unregistered),  as  they  are  able  to  rely  on  the  types  of 
rights  best  fitted  for  their  needs,  and  particularities  of  the  sector  they  operate  in.  The 
stakeholders consider specialisation of courts as a favourable factor, and see the creation 
of Community design courts as a positive step. 

Spare parts 

The  issue  of  spare  parts  protection  was  heavily  commented  on  by  many  stakeholders. 
Stakeholders  consider  that  different  rules  on  spare  parts  protection  in  the  EU  are  a 
problem.  They  believe  that  the  current  complexity  of  the  system,  based  on  divergent 
approaches  of  the  Member  States,  makes  it  difficult  for  companies  (and  SMEs  in 
particular)  to  operate  across  the  internal  market,  leads  to  serious  obstacles  in  the  free 
movement  of goods and involves confusion and considerable legal  uncertainty both  for 
professionals and consumers. Stakeholders seemed to agree that the rules on spare parts 
protection should be the same in the EU, as they are a necessary pre-requisite for a proper 
functioning of the single market. 

While the harmonisation of rules on spare parts protection seems to be widely supported 
by  the  different  stakeholders,  there  continues  to  be  no  consensus  as  to  an  acceptable 
solution.    In  general,  the  representatives  of  independent  manufacturers  and  consumer 
associations  support  the  idea  that  all  the  EU  Member  States  should  introduce  a  repair 
clause in their legislation. On the other hand, right holders’ representatives (including in 
particular original equipment manufacturers) are against such solution. This divide is not 
unexpected, as the vested interests of these groups are diametrically opposed: while car 
manufacturers  who  protect  visible  spare  parts  directly  benefit  from  this  protection,  the 
independent spare parts producers suffer as a result of protection. 

International aspects 

In 2006, the EU acceded to the Hague Agreement, linking the Community design system 
with  the  international  design  registration  system  of  the  WIPO.  A  large  majority  of 
stakeholders  welcomes  this  accession  as  it  creates  savings  in  term  of  time,  money  and 
less administrative burden. A large majority of stakeholders also appear in favour of the 
accession of the Member States to the Hague Agreement, arguing that this would allow 
for a better tailoring of their IP strategy. Results of the Public Consultation show that the 
international,  Community  and  national  design  systems  operate  well,  although 
inconsistencies remain.  

4.  How the results of consultations were used? 

The results of various consultations presented above underpin the whole evaluation of the 
design  protection  system  in  the  EU.  They  were  used  to  judge  the  effectiveness, 
efficiency,  relevance,  coherence  and  added  value  of  the  current  system  and  helped  in 
formulating recommendations for the future. 

84 

 
 
ANNEX 3: METHODS AND ANALYTICAL MODELS 

The  evaluation  of  the  EU  design  protection  system  was  a  transparent  and  inclusive 
process,  involving  wide  groups  of  public  and  private  stakeholders.  This  Evaluation 
Report is based on various sources of information, including in particular: 

  proposals  (including  explanatory  memoranda)  and  other  preparatory  materials  (e.g. 
Green  Paper  on  the  Legal  Protection  of  Industrial  Designs  and  Prospective  Study 
about the Design Registration Demand at a European Union Level) issued to support 
the  adoption  of  the  EU  legislation  on  design  protection,  and  the  conclusions  from 
these documents as reflected in the recitals of the Directive and the Regulation;  

  dedicated studies prepared by external contractors to feed the evaluation process: “The 
Economic  Review  of  Industrial  Design  in  Europe”,  January  2015  (‘Economic 
Review’),  “Legal  review  on  industrial  design  protection  in  Europe”,  April  2016 
(‘Legal  Review’)  and  study  on  “The  Intellectual  property  implications  of  the 
development of industrial 3D printing”, April 2020 (‘3D Printing Study’);  

  studies  and  reports  prepared  by  the  EUIPO295  and  the  European  Observatory  on  the 

infringements of IPR296;  

  other  available  studies  and  data  collections  prepared  by  national  or  international 
public  authorities,  including  in  particular  national  IP  offices,  academics  or  other 
stakeholders; 

  economic, legal and other specialised literature;   
  feedback received from the stakeholders on the Evaluation Roadmap297;  

  results  of  the  open  public  consultation  “Evaluation  of  EU  legislation  on  design 

protection” (‘Public Consultation’)298;  

  exchanges with Member States representatives  in the framework of the Commission 

Expert Group on Industrial Property Policy299; 

  feedback received through the EUIPO from the work of the EU Intellectual Property 
Network,  including  in  particular  achievements  and  experiences  of  the  Convergence 
Programmes; 

  feedback  received  from  the  stakeholders  during  bilateral  meetings  and  public 

conferences. 

The following evaluation grid shows how the various sources contributed to addressing 
the evaluation questions across different Sections of this Evaluation Report: 

295 https://euipo.europa.eu/ohimportal/en/publications  
296 https://euipo.europa.eu/ohimportal/pl/web/observatory/observatory-publications  
297 https://ec.europa.eu/info/law/better-regulation/have-your-say/initiatives/1846-Evaluation-of-EU-
legislation-on-design-protection  
298 Public  consultation  “Evaluation  of  EU  legislation  on  design  protection”,  results  available  at: 
https://ec.europa.eu/info/law/better-regulation/have-your-say/initiatives/1846-Evaluation-of-EU-
legislation-on-design-protection/public-consultation  and  summarised  in  the  Factual  Summary  Report 
(Annex IV to this Evaluation Report). 
299 https://ec.europa.eu/transparency/regexpert/index.cfm?do=groupDetail.groupDetail&groupID=3434  

85 

 
 
                                                           
SECTION 

Background to the 
intervention 

MAIN SOURCES USED 

 Recitals of the Directive and the Regulation 
 Green Paper on the Legal Protection of Industrial Designs  
 Prospective  Study  about  the  Design  Registration  Demand  at  a 

Implementation/State 
of play 

Overall Functioning 
of the EU system for 
design protection

Protection tools 

Procedures 

Enforcement 

Spare parts 

International 
dimension 

European Union Level 

 Proposals and other preparatory materials 
 Economic Review and Legal Review 
 Literature review 

 Economic Review and Legal Review 
 3D Printing Study 
 Public Consultation 
 IPO Questionnaire 
 Data from the EUIPO 
 Literature review 

 Economic Review and Legal Review 
 Public Consultation 
 Data from the EUIPO 
 Literature review  

 Economic Review and Legal Review 
 3D Printing Study 
 Public Consultation 
 IPO Questionnaire 
 Data and feedback from the EUIPO  
 Literature review 

 Economic Review and Legal Review 
 Public Consultation 
 IPO Questionnaire 
 Data and feedback from the EUIPO  
 Literature review 

 Economic Review and Legal Review 
 3D Printing Study 
 Public Consultation 
 Evaluation Report on the functioning of the Directive 2004/24/EC 

on the enforcement of intellectual property rights 

 Literature review  

 Economic Review and Legal Review 
 Public Consultation 
 Literature review  

 Economic Review and Legal Review 
 Public Consultation 
 Literature review 

86 

 
 
 
Coherence with the 
Trade Mark Reform 

 Economic Review and Legal Review 
 Public Consultation 
 Literature review 

Compliance with the 
Lisbon Treaty 

 Economic Review and Legal Review 
 Public Consultation 

Desk research 

Surveys 

Interviews 

- comprehensive review of the economic 
literature on five principal topics:  the 
characteristics of design-intensive 
industries; the economic effects of design 
protection at the level of companies; the 
relationship between protecting designs 
and economic growth, innovation, 
employment and competition; the 
enforcement of industrial designs; and the 
economic consequences of the non-
harmonisation of spare parts legislation 

- desk research consisted of a review of the 
legal developments at the EU level and 
desk research in the 15 selected EU 
Member States 

w
e
i
v
e
R
c
i
m
o
n
o
c
E

w
e
i
v
e
R

l
a
g
e
L

  - legal analysis comprising a literature-
y
d
u
t
S
g
n
i
t
n
i
r
P
D
3

based review of the current EU IP law was 
utilised together with a systematic review 
technique to explore the various legal 
issues regarding 3D printing and IP law. 
This study also includes a mapping 
exercise of industry sectors and related 
value chains where 3D printing is used. 

- online 
survey 
targeting 
companies in 
design-
intensive 
industries 

- 435 replies 
received  

- two survey 
questionnaire
s: one for 
industry 
stakeholders 
(409 replies) 
and one for 
legal and 
institutional 
stakeholders 
(28 replies) 

N/A 

- series of semi-
structured interviews 
with companies that 
had responded to the 
survey 

- WIPO, EUIPO, two 
trade associations, 10 
companies 

- structured 
stakeholder interviews 
with industry 
stakeholders and legal 
and institutional 
stakeholders 

- 2 interviews per MS 
(except LU), 28 on the 
national level and 
several interviews on 
the EU level 

- semi-structured 
interviews with 41 
industry participants 

No  specific  models  or  methods  have  been  developed  for  the  Evaluation  Report  itself. 
Having  said  that,  the  Report  heavily  relied  on  the  studies  prepared  by  external 
contractors,  that  each  had  their  own  methodology300.  The  main  methods  used  by  these 
studies are outlined in the table below. 

300  Economic  Review  –  chapter  1.2  “Methodology  applied”;  Legal  Review  –  chapters  2.1  “Summary  of 
method”  and  2.2  “Key  information  sources”;  3D  Printing  Study  –  Executive  summary,  section 
“Methodology and Structure of the Report”. 

87 

 
 
                                                           
 
 
 
 
 
 
 
ANNEX 4: RESULTS OF THE OPEN PUBLIC CONSULTATION – FACTUAL 
SUMMARY REPORT  

This  annex  presents  detail  analysis  of  the  responses  to  the  open  public  consultation 
“Evaluation  of  EU  legislation  on  design  protection”301  supporting  the  evaluation  of 
Directive  98/71/EC  on  the  legal  protection  of  designs  and  Regulation  No  6/2002  on 
Community designs.    

This consultation was available on the central consultations website of the Commission 
and  used  EUSurvey  online  questionnaire  in  23  EU  languages.  The  reply  period  lasted 
between 18.12.2018 and 30.4.2019. All received answers are published302. 

This  consultation  was  open  to  anyone  who  wished  to  reply.  There  was  no  sampling  or 
pre-selection  of  respondents.  Therefore,  the  results  should  be  treated  as  representing 
views of those who participated and cannot be interpreted as representative for the EU in 
statistical sense.  

Demography of respondents 

The  Commission  received  196  answers  through  EUSurvey  and  six  by  email.  Answers 
were received from 21 EU Member States, two EEA countries and three other countries 
(see Fig.1). Two thirds of all answers came from six countries (DE, ES, UK, FR, BE and 
IT).  Respondents  attached  43  position  papers  to  their  replies.  The  statistics  below  are 
calculated based on EUSurvey replies only. 

Fig.1. Replies to public consultation per country  

Source: EUSurvey  

More  than  half  of  the  respondents  were  representing  business:  individual  companies 
(37%)  and  business  associations  (22%).  Less  than  half  of  individual  companies  (43%) 
were SMEs (micro enterprises -11%, small – 18% and medium-sized -14%). Citizens and 

301 https://ec.europa.eu/info/law/better-regulation/initiatives/ares-2018-3527248/public-consultation_en  
302  https://ec.europa.eu/info/law/better-regulation/initiatives/ares-2018-3527248/public-
consultation_en#consultation-outcome  

88 

 
 
                                                           
consumer  organisations  accounted  for  15%  of  answers  (including  three  answers  from 
consumer organisations). 11% of answers came from public authorities (representing 16 
EU Member States, two EEA countries and the United Kingdom), 4% from NGOs; three 
answers were received from academia and two from trade unions. 

Around 40% of respondents were registered in the European transparency register. 

A  bit  more  than  a  third  of  respondents  were  active  in  professional,  scientific  and 
technical  activities,  followed  by  manufacturing  (30%),  wholesale  and  retail  (22%), 
information  and communications (16%) and creative, arts and entertainment (9%) (Fig. 
2).  

Fig.2. Replies to public consultation per activity of respondents 

Activity 

% of responses* 

Professional, scientific and technical activities 

Manufacturing 

Wholesale and retail trade; Repair of motor vehicles 

Information and communication 

Public administration 

Creative, arts and entertainment activities 

Other activities 

*This was a multiple choice question 
Source: EUSurvey 

36% 

30% 

22% 

16% 

12% 

9% 

35% 

Among  manufacturers,  around  40%  of  respondents  were  manufacturing  motor  vehicles 
or  their  parts  and  accessories,  around  20%  -  electrical  equipment,  wearing  apparel  and 
footwear,  transport  equipment  and  tools,  and  general  hardware.  One  in  six  produced 
furniture,  lightning  equipment,  household  goods,  games,  toys  and  sports  goods,  and 
travel goods; one in eight – computers and optical products, jewellery, graphic symbols 
and  logos,  clocks  and  watches,  and  machinery.  Finally,  every  tenth  produced  packages 
and containers, building units, medical and office equipment303. 

When asked about their knowledge of the design protection systems in the EU, 40% of 
respondents  declared  that  they  were  providing  (legal)  advice  (hereafter  referred  to  as 
“advisers”),  39%  that  they  were  owners/creators  of  designs  (hereafter  “owners”),  and 
30% that they were users of designs of others (hereafter “users”). One in six worked in 
intellectual  property  office,  ministry  or  other  authority  (hereafter  “authorities”)  or 
lectured/conducted  research  on  designs  (hereafter  “researchers”  (see  Fig.3).  A  fifth 
(20%)  of  respondents  did  not  choose  any  of  the  mentioned  categories,  and  are  thus 
referred to as “others” in this report. Six respondents indicated that they do not have any 
knowledge of the design protection systems.  

These  categories  will  be  used  to  analyse  all  the  answers  below.  Please  note  that  one 
respondent  could  have  chosen  more  than  one  category  to  describe  itself. 
Questionnaire consisted of common questions and questions specific to each category of 
respondents.  The  respondents  received  different  sets  of  questions,  depending  on  the 
categories they have chosen. 

303 Please note that it was possible to select more than one area of manufacturing. 

89 

 
                                                           
Additionally, answers of SMEs (companies with less than 250 employees) are presented.  

Fig.3. Respondents by their role  

Role 

% of responses* 

Advisers 

Owners 

Users (of designs of others) 

Authorities 

Researchers 

Others 

*This was a multiple choice question 
Source: EUSurvey 

40% 

39% 

30% 

16% 

15% 

20% 

The below analysis shows percentages without taking into account “no opinion” answers. 
Numbers are rounded thus sometimes do not sum to 100%.  

General questions to all 

Q2. What do you generally think about the overall functioning of the design protection system in the EU 
(taking national design systems and the Community design regime altogether as a complementary whole 
and considering all relevant aspects of design protection)? 

Very well or rather 
well 

Very bad or rather 
bad 

No. of answers* 

Owners 

Users 

Advisers 

Authorities 

Researchers 

Other 

SMEs 

All answers 

89% 

51% 

84% 

97% 

93% 

45% 

77% 

75% 

11% 

49% 

16% 

3% 

7% 

55% 

23% 

25% 

65 

53 

73 

30 

28 

31 

26 

166 

*no opinion answers not included 
Source: responses to open public consultations on designs 

Most respondents considered that the design protection system in the EU works well or 
very  well.  Representatives  of  authorities,  researchers  and  owners  of  designs  were  most 
positive about the functioning of the design protection system in the EU, with around or 
more than 90% positive answers. A vast majority of SMEs and advisers also considered 
that the system is functioning very well or rather well. On the other hand, users were split 
on the issue, while slight majority of other respondents considered that the system is not 
functioning well. 

The  positive  comments  about  the  functioning  of  the  EU  design  system  referred  to  its 
predictability,  speed  and  cost  effectiveness,  as  well  as  a  high  degree  of  harmonisation 
and useful complementarity between the national and unitary titles. On the negative side, 
the  respondents  pointed  to  harmonisation  gaps  (e.g.  spare  parts,  harmonisation  of 
invalidity  proceedings),  need  for  improvements  (e.g.  procedural,  in  the  areas  of  raising 

90 

 
 
awareness,  enforcement,  preventing  abuse)  and  modernisation  (e.g.  protection  of  new 
types of designs), and lack of legal certainty (due to lack of substantive examination). 

While  one  in  four  respondents  considered  the  overall  functioning  of  design  protection 
system  to  be  rather  bad  or  very  bad,  around  85%  of  those  respondents  considered  also 
that non-harmonisation of spare parts protection is a problem. 

Q3. Please evaluate the importance of the following objectives of the harmonisation of national rules and 
of the creation of the Community design system. 

Providing the same protection of 
designs everywhere in the EU 

Preventing counterfeiting and copying 
of Community designs 

Allowing for a simplified enforcement 
of Community designs 

Making Community design registration 
readily accessible to small and 
medium-sized enterprises as well as to 
individual designers 

Promoting innovation, creativity and 
development of new products in the 
EU 

Serving the needs of all industry 
sectors 

Allowing for simple registration of 
Community designs 

Allowing for affordable registration of 
Community designs 

Allowing products to circulate freely in 
the internal market 

Own.  Use.  Adv.  Aut.  Res.  Oth. 

SME 

All 

100% 

98% 

100%  100%  100%  100%  100% 

99% 

100% 

98% 

99% 

100%  100%  100% 

96% 

99% 

96% 

89% 

97% 

100% 

97% 

100%  100% 

96% 

97% 

96% 

93% 

100% 

96% 

100% 

93% 

95% 

92% 

93% 

96% 

100%  100% 

97% 

96% 

94% 

94% 

95% 

91% 

100% 

93% 

97% 

88% 

94% 

92% 

87% 

89% 

100% 

93% 

100% 

89% 

91% 

95% 

94% 

88% 

100% 

97% 

96% 

89% 

91% 

77% 

89% 

87% 

96% 

100%  100% 

93% 

86% 

Max no. of answers 

75 

58 

73 

30 

29 

34 

27 

185 

All the objectives of the EU designs system were seen as important by vast majority of 
the stakeholders with answers in range of 90%. Relatively the lowest importance, around 
85%, was attributed to the internal market objective, especially by the owners. 

Among  other  objectives  that  should  be  pursued,  the  respondents  indicated  need  for 
further  harmonisation,  in  particular  in  relation  to  spare  parts  protection,  improving 
cooperation  between  public  authorities  to  prevent  imports  of  counterfeit  goods,  and 
preventing abuse of design rights and creations of product monopolies. 

91 

 
 
 
 
 
 
 
Q4. Based on your knowledge of the design protection systems in the EU, how have the harmonisation of 
national  rules  and  the  creation  of  the  Community  design system  contributed  to  the  achievement  of  those 
objectives since 2003? 

Allowing for simple registration of 
Community designs 

Allowing for affordable registration 
of Community designs 

Promoting innovation, creativity and 
development of new products in the 
EU 

Making Community design 
registration readily accessible to 
small and medium-sized enterprises 
as well as to individual designers 

Preventing counterfeiting and 
copying of Community designs 

Allowing for a simplified 
enforcement of unregistered 
Community designs 

Providing the same protection of 
designs everywhere in the EU 

Allowing products to circulate freely 
in the internal market 

Serving the needs of all industry 
sectors 

Own.  Use.  Adv.  Aut. 

Res.  Oth. 

SME 

All 

100% 

97% 

97% 

100%  100%  100%  100% 

98% 

100% 

98% 

95% 

100%  100%  100%  100% 

97% 

93% 

96% 

93% 

92% 

90% 

96% 

89% 

96% 

98% 

94% 

88% 

96% 

96% 

95% 

90% 

94% 

90% 

93% 

90% 

93% 

93% 

95% 

95% 

92% 

91% 

86% 

73% 

84% 

83% 

95% 

78% 

85% 

95% 

56% 

88% 

93% 

93% 

42% 

82% 

80% 

89% 

50% 

78% 

96% 

83% 

39% 

60% 

72% 

77% 

38% 

66% 

91% 

76% 

32% 

61% 

65% 

Max no. of answers 

62 

52 

64 

28 

27 

31 

22 

157 

*no opinion answers not included, thus the residual to 100% represents “hindered” answers; cells with 
less than 50% shaded 
Legend: Own.=owners, Use.=users, Adv.=advisers, Aut.=authorities, Res.=researchers, Oth.=other, 
SME=SMEs, All=all respondents; the last row shows the maximum number of respondents that answered 
this question 
Source: responses to open public consultations on design 

Respondents  were  almost  unanimous  in  praising  EU  design  system  rules  for  making  it 
simple  and  affordable  to  register  Community  designs.  They  also  considered  that  the 
system  helped  in  promoting  innovation  and  is  accessible  to  SMEs  and  individual 
designers,  as  well  as  helps  in  preventing  counterfeiting.  Around  85%  said  it  simplified 
enforcement  of  UCDs.  All  but  users  (who  were  split  on  these  issues)  and  others  (who 
said it hindered) thought that the system provides uniform protection everywhere in the 
EU  and  allows  for  free  circulation  of  products  in  the  internal  market.  The  objective  of 
‘Serving the needs of all industry sectors’ seemed to have a lower rate of achievement: 
only around two thirds of owners and advisers said that the system serves the needs of all 
industry sectors, while majority of users and others said it was rather a hindrance in that 
respect.  In  their  additional  remarks  some  of  the  respondents  referred  to  the  lack  of 
harmonisation  of  spare  parts  protection  and  insufficient  harmonisation  of  design 
enforcement (need to launch infringement proceedings separately for all MSs) as factors 
undermining the functioning of the design protection system in the EU. 

92 

 
 
 
Specific question to public authorities 

Q5.  Do  you  agree  that  the  respective  costs  involved  in  implementing  the  Design  Directive  and  the 
Community  Design  Regulation  are  justified  given  the  benefits  that  have  already  been  achieved  by 
harmonising  essential  aspects  of  design  protection  and  providing  for  a  unitary  system  of  EU-wide 
protection? 

Authorities 

Yes 

100% 

No 

0% 

No. of answers* 

22 

*no opinion answers not included 
Source: responses to open public consultations on designs 

All representatives of public authorities agreed that the cost of implementing the Design 
system is justified by the achieved benefits. 

General questions to all 

Q6. In this context, to what extent do you agree that the harmonisation of national rules and the creation 
of the Community design system is of added value compared to a situation where Member States would 
have (entirely) different rules on design protection and such protection would be available at national 
level only? 

Owners 

Users 

Advisers 

Authorities 

Researchers 

Other 

SMEs 

All answers 

Agree 

99% 

98% 

97% 

100% 

100% 

100% 

93% 

98% 

Disagree 

No. of answers* 

1% 

2% 

3% 

0% 

0% 

0% 

7% 

2% 

73 

57 

73 

30 

28 

35 

27 

183 

*no opinion answers not included 
Source: responses to open public consultations on designs 

Respondents  in  all  categories  acknowledged  the  added  value  of  the  EU  harmonised 
system  as  compared  to  rules  set  individually  by  each  Member  State.  The  respondents 
underlined  the  following  benefits  of  harmonisation:  simplified  registrations,  increased 
legal certainty and predictability, provision of a unique protection title, prevention – or at 
least reduction – of counterfeiting activities and of unfair competition. Harmonisation is 
viewed as highly valuable for businesses which activities are not purely national. In the 
open  replies  to  this  question,  some  respondents  called  for  further  harmonisation  as 
regards  specific  issues.  This  is  further  examined  under  question  48,  which  specifically 
deals with the degree of harmonisation.  

93 

 
 
 
 
 
 
 
Q7.  Are  you  aware  of  any  unintended  consequences  or  shortcomings  of  the  Design  Directive  or  the 
Community Design Regulation? 

Owners 

Users 

Advisers 

Authorities 

Researchers 

Other 

SMEs 

All answers 

Yes 

50% 

78% 

69% 

54% 

74% 

88% 

57% 

61% 

No 

50% 

22% 

31% 

46% 

26% 

12% 

43% 

39% 

No. of answers* 

58 

50 

64 

26 

23 

34 

23 

158 

*no opinion answers not included  
Source: responses to open public consultations on designs 

All  categories  of  respondents  found  some  unintended  consequences  or  shortcoming  of 
the EU Design system.  Owners of designs  were less inclined (50%) to  find  unintended 
consequences or shortcomings than users (78%), researchers (74%) and advisers (69%).  

Some respondents  pointed to  the existing discrepancies between the Design Regulation 
and  the  Design  Directive  (i.e.  indication  of  products,  description  of  the  designs,  and 
publication of the description of the designs). As shown under question 48, respondents 
would  welcome  harmonisation  of  the  representation  requirements  as  well  as  of  the 
products  indications  and  their  potential  effects  on  the  scope  of  protection.  As  regards 
descriptions  of  designs,  replies  to  question  44  show  that  a  third  of  respondents  have 
concerns about their limited utility. Other discrepancies mentioned in the replies to this 
question (regarding e.g. the scope of protection, the presentation requirements, protection 
requirements, the interaction between designs and copyright law, etc.) are detailed later 
in  the  text,  in  the  questions  directly  dealing  with  these  issues.  Some  respondents 
expressed  concerns  and  requested  clarity  as  regards  the  possible  consequences  of  a 
disclosure of an unregistered Community design outside the EU (see also question 9).  

Finally,  several  respondents  representing  the  exhibition  industries  criticised  in  their 
position papers limiting the scope of relevant exhibitions for claiming priority covered by 
the  Regulation  to  world  exhibitions,  and  called  for  broadening  the  notion  of  exhibition 
priority under the Community design regime to other trade fairs.  

94 

 
 
 
 
 
 
 
 
 
Q8.  In  general,  do  you  think  that  there  is  sufficient  awareness  among  designers  and  entrepreneurs 
(including  small  and  medium-sized  enterprises)  of  the  availability,  benefits  and  ways  for  protecting 
designs in the EU? 

Owners 

Users 

Advisers 

Authorities 

Researchers 

Other 

SMEs 

All answers 

Yes 

25% 

56% 

19% 

24% 

4% 

59% 

28% 

35% 

No 

75% 

44% 

81% 

76% 

96% 

41% 

72% 

65% 

No. of answers* 

53 

52 

62 

25 

25 

34 

25 

148 

*no opinion answers not included 
Source: responses to open public consultations on designs 

Almost two thirds of respondents agreed that the awareness of the availability, benefits 
and ways for protecting designs in the EU is insufficient. Only users of designs of others 
and  other  respondents  thought  otherwise.  Advisers  and  researchers  were  the  most 
sceptical as were around three quarters of owners and SMEs. 

Respondents  seemed  to  agree  that  the  problem  of  insufficient  awareness  of  the 
availability,  benefits  and  ways  for  protecting  designs  affects  in  particular  young 
designers  and  SMEs.  Some  respondents  indicated  fashion  and  clothing  industry  as  the 
one where low awareness on design protection benefits can have particularly detrimental 
effects.  Respondents  also  indicated  that  future  awareness  raising  activities  should  not 
only focus on explaining benefits of design protection, but also on clarifying differences 
between design and other IP rights, in particular trade mark and copyright. 

Q9. Do you consider that the unregistered Community design provides a useful legal protection against 
unauthorised copying of that design by a third party? 

Owners 

Users 

Advisers 

Authorities 

Researchers 

Other 

SMEs 

All answers 

Yes 

74% 

69% 

69% 

58% 

64% 

76% 

50% 

70% 

No 

26% 

31% 

31% 

42% 

36% 

24% 

50% 

30% 

No. of answers* 

57 

26 

68 

19 

28 

17 

16 

124 

*no opinion answers not included 
Source: responses to open public consultations on designs 

Majority of respondents (70%) considered that unregistered Community design provides 
a  useful  legal  protection  against  unauthorised  copying.  Authorities  and  SMEs  were  the 
most sceptical on this point. 

95 

 
 
 
Respondents  described  the  unregistered  Community  design  as  an  attractive  tool  for 
protecting short-cycle (short commercial life) or seasonal products, and thus particularly 
useful  in  some  specific  industry  sectors  (e.g.  fashion,  textile  and  clothing,  eyewear, 
furniture  and  furnishing).  Lack  of  formalities  and  registration  costs  seem  to  make 
unregistered Community design generally attractive also for SMEs and young designers. 
Some stakeholders reported that they use this title as a ‘back up’ protection in situations 
where they did not file application for registered designs. On the other hand, some other 
respondents believed that rules on unregistered designs should be removed altogether due 
to uncertainties they create for market participants (as lack of registration makes it more 
difficult to verify existence of the right).   

Respondents  also  referred  to  difficulties  with  enforcement  of  unregistered  Community 
designs.  Main  challenges  they  reported  on  included  the  reversed  burden  of  proof  and 
high threshold of evidence required to prove that the contested use resulted from copying 
the protected design.  In  that context,  several  respondents  considered it useful to  clarify 
the  notion  of  ‘copying’  (art.  19  (2)  of  the  Regulation  on  Community  designs).  Some 
respondents also believed that the necessity to disclose the design in the EU to obtain the 
protection based on unregistered Community design is a burden for those companies who 
need to rely on global marketing strategy.   

Specific questions to users of designs of others 

The  questions  below  were  only  asked  to  those  who  identified  themselves  as  “Users  of 
designs of others”304. 

Q10.  What  is  your  opinion  on  design  protection  in  the  EU?  (%  of  fully  agree  and  somewhat  agree 
answers*) 

It helps acknowledging and 
protecting the marketing value of a 
design 

It fosters innovation through 
competition by encouraging the 
creation of new designs 

It’s difficult/costly to find out if a 
design is protected 

I never know if I am breaking the law 
or not 

It allows the designer/owner to 
receive a fair return on its design 
investment 

Use. 
& 
Own. 

Only 
Use. 
** 

Use. 
& 
Adv. 

Use. 
& 
Auth. 

Use. 
& 
Res. 

Use. 
& 
Oth. 

Use. 
& 
SME 

All 

96% 

71% 

93% 

80% 

90% 

75% 

88% 

91% 

92% 

70% 

92% 

100%  100%  100% 

78% 

90% 

81% 

82% 

82% 

75% 

75% 

100%  100% 

88% 

67% 

73% 

64% 

50% 

50% 

100% 

78% 

79% 

71% 

80% 

71% 

60% 

90% 

83% 

44% 

78% 

It is abused to seek protection for 

65% 

55% 

73% 

60% 

67% 

94% 

75% 

74% 

304 Please note that respondents were able to choose more than one category; thus besides “users of designs 
of  others”  the  respondents  might  have  identified  themselves  also  as  other  categories  (e.g.  owners  of 
designs, legal advisers, etc.). This is reflected in the tables in this section, where column “All” should be 
interpreted as all  who selected “users of designs of others”. Column  “Only Use.”  – those  who identified 
themselves only as “Users of designs of others”. The remaining columns should be interpreted as follows: 
e.g.  column  “Use.  &  Own.”  –  are  those  “users  of  designs  of  others”  who  also  identified  themselves  as 
“creators/owners” (but might also click other categories), etc. 

96 

 
 
                                                           
designs that should never be 
registered 

It is difficult to defend oneself against 
an infringement claim given the 
unclear subject-matter of what is 
actually protected 

It helps preventing a 
misappropriation of research and 
development expense 

48% 

73% 

36% 

0% 

50% 

94% 

78% 

71% 

70% 

71% 

50% 

60% 

56% 

50% 

67% 

70% 

It allows me to use designs legally 

71% 

71% 

79% 

100% 

80% 

50% 

75% 

67% 

It rightly gives the designer/owner 
the right to prevent others from using 
it without its consent 

It is too easy to claim design 
infringement 

It helps me to innovate, building on 
what others have created 

Use of protected designs is too 
expensive 

84% 

60% 

93% 

100%  100% 

44% 

70% 

65% 

35% 

64% 

31% 

40% 

40% 

94% 

56% 

62% 

76% 

60% 

75% 

80% 

78% 

31% 

88% 

58% 

15% 

100% 

20% 

0% 

14% 

50% 

50% 

37% 

It stifles innovation 

13% 

11% 

15% 

20% 

10% 

Max no. of answers 

25 

11 

14 

5 

10 

6% 

18 

25% 

8% 

10 

51 

*no opinion answers not included, thus the residual to 100 represents “disagree” answers; cells with less 
than 50% shaded; ** answers of those who identified themselves exclusively as owners 
Legend: Own.=owners, Use.=users, Adv.=advisers, Auth.=authorities, Res.=researchers, Oth.=other, 
SME=SMEs, All=all respondents; the last row shows the maximum number of respondents that answered 
this question 
Source: responses to open public consultations on designs 

Almost all respondents who identified themselves as users of designs or others concluded 
that design protection in the EU helps acknowledging and protecting the marketing value 
of  a  design  and  fosters  innovations.  At  the  same  time,  however,  similar  number  of 
respondents  stated  that  it  is  difficult  and  costly  to  find  out  if  a  design  is  protected  and 
many  respondents  stated  that  they  never  know  if  they  are  breaking  the  law  or  not  by 
using  a  design.  Around  three  quarters  agreed  that  the  system  allows  designer/owner  to 
receive a fair return on their design investment. Similar number noted that the system is 
abused to seek protection for designs that should never be registered. Around 70% said 
the system allows them to use designs legally. 

While  respondents  who  identified  themselves  only  as  users  (73%)  and  those  who 
identified themselves as users and others (94%), and users and SMEs (78%) thought that 
“it is difficult to defend oneself against an infringement claim given the unclear subject-
matter  of  what  is  actually  protected”,  those  who  identified  themselves  as  users  and 
owners of designs and users and researchers were split on the issue. Those who identified 
themselves as users and advisers and users and authorities considered the opposite. 

Around 65% of all respondents agreed that design protection in the EU “rightly gives the 
designer/owner  the  right  to  prevent  others  from  using  it  without  its  consent”  with  the 
highest support from the users who also identified themselves as authorities, researchers 
or advisers. Respondents who identified themselves as users and other did not agree. 

While  around  60%  of  respondents  who  identified  themselves  only  as  users,  and  those 
who identified themselves as users and others or users and SMEs thought it is too easy to 

97 

 
claim design infringement, the remaining groups claimed the opposite is true by the same 
margin (around 60%). 

A slight majority (60%) of most respondents (all but those who identified themselves as 
users and others) thought that the system “helps me to innovate, building on what others 
have created”. 

While  the  respondents  who  identified  themselves  only  as  users  thought  that  the  use  of 
protected designs is too expensive, those who identified themselves as users and others or 
users and SMEs were split on the issue, and all remaining groups hold the opposite view. 

Only around 10% of respondents thought that the system stifles innovation. 

The additional remarks provided by the respondents on this question referred to specific 
challenges in the spare parts aftermarket and called for further harmonisation of rules in 
this  respect,  in  particular  by  abolishing  design  protection  of  motor  vehicle  spare  parts 
used for repair purposes. They have also  pointed out  the difficulties in  verifying if  any 
prior unregistered designs exist and called for improving the possibility to run automatic 
searches.  

Q11. Why do you use protected designs of others? (multiple choice question; % of reasons selected*) 

Other 

To improve products that I sell 

For my private, non-commercial use 

For educational purposes and in research papers/articles 

*no opinion answers not included; cells with less than 50% shaded 
Source: responses to open public consultations on designs 

Max no. of answers 

All 

64% 

33% 

12% 

9% 

58 

While there was some confusion about this question and majority of respondents selected 
answer  “other”  and  explain  that  they  “do  not  use  protected  designs  of  others”,  the 
remaining noted that designs are used to improve products they sell (33% of answers), or 
for private non-commercial use, education and research (together 21%). 

Q12. How do you check who owns the design? (multiple choice question; % of reasons selected*)  

Other 

I search in the database provided by the European Union Intellectual Property Office 
(EUIPO) 

I search in the database provided by the World Intellectual Property Organization (WIPO) 

I use a professional service to conduct the search for me 

I search on the Internet 

I search in the database of the competent industrial property office of a Member State 

I do not check at all 

I do not check as my usage is exempted from protection 

no. of answers 

*no opinion answers not included; cells with less than 50% shaded 
Source: responses to open public consultations on designs 

All 

52% 

33% 

31% 

24% 

24% 

24% 

5% 

3% 

58 

98 

 
 
 
As  regards  the  way  users  verify  the  ownership  of  designs,  the  most  popular  options 
selected  by  one  third  of  respondents  was  searching  the  database  of  EUIPO  or  the 
database  of  WIPO  (31%)  –  this  is  by  far  the  preferred  options  for  users  that  are  also 
advisers,  researchers  or  authorities.  Around  one  quarter  uses  professional  service  to 
conduct  the  search,  similar  number  does  the  search  on  internet  or  check  databases  of 
competent industrial property office in their country. Only around 5% do not check at all. 
And 3% do not check as their usage is exempted. 

Regarding  other  ways  of  running  the  search  (selected  by  around  half  of  respondents), 
suppliers of motor vehicle spare parts indicated that the easiest way for them is either to 
verify the ownership of design rights directly with car manufacturers, or to run searches 
in public databases based on the car manufacturer brand.  

Those  who  use  professional  services  were  asked  about  cost  of  such  search.  They 
explained  that  the  cost  depends  on  several  factors,  including  the  scope  of  the  search 
(number  of  countries  covered).  Two  respondents  reported  that  in  their  experience  the 
average  cost  of  a  search  would  amount  to  approximately  EUR 1 500,  with  the  cost  of 
worldwide search going far beyond this amount.  

Q13. Have you come across any of the following problems? (% of always and often answers*) 

I could not establish if a design is 
still protected 

I could not establish if a design is 
protected in my Member State 

The licensing cost of using a design 
was too high for me 

I could not identify the owner of a 
design 

Use. 
& 
Own. 

24% 

20% 

36% 

10% 

only 
Use. 
** 

89% 

89% 

80% 

56% 

Use. 
& 
Adv. 

Use. 
& 
Auth. 

Use. 
& 
Res. 

Use. 
& 
Oth. 

Use. 
& 
SME 

All 

18% 

25% 

20% 

94% 

88% 

63 

18% 

50% 

30% 

94% 

71% 

62 

20% 

0% 

0% 

0% 

80% 

50 

9% 

25% 

20% 

6% 

29% 

Max no. of answers 

21 

9 

11 

4 

10 

17 

8 

18 

46 

*no opinion answers not included, thus the residual to 100 represents “rarely” and “never” answers; cells 
with less than 50% shaded 
** answers of those who identified themselves exclusively as owners 
Legend: Own.=owners, Use.=users, Adv.=advisers, Auth.=authorities, Res.=researchers, Oth.=other, 
SME=SMEs, All=all respondents; the last row shows the maximum number of respondents that answered 
this question 
Source: responses to open public consultations on designs 

Vast  majority  of  respondents  (except  those  who  identified  themselves  only  as  users) 
reported that identifying the owner of a design is rarely or never a problem.  

For around two thirds of respondents establishing whether a design is still protected, or 
whether  it  is  protected  in  their  Member  State  was  often  difficult,  and  around  half 
considered  the  cost  of  using  designs  was  too  high.  These  three  issues  where  chosen 
mainly  by  those  respondents  that  identified  themselves  only  as  users  or  as  users  and 
SMEs,  and  users  and  other,  while  remaining  categories  did  not  consider  them  as 
problems.  

Among other problems they have come across, the respondents indicated difficulty with 
verifying existence of unregistered design protection. One respondent reported that it is 

99 

 
 
 
often  impossible  for  him  to  obtain  a  licence  for  designs  covering  motor  vehicle  spare 
parts. 

More specific questions to all 

The following questions were asked to all respondents. 

Q14. An unregistered Community design is protected for 3 years after its first making available to the 
public. Do you think this term of protection is adequate?* 

Yes 

No, it is too long 

No, it is too 
short 

No. of answers* 

Owners 

Users 

Advisers 

Authorities 

Researchers 

Other 

SMEs 

All answers 

51% 

33% 

59% 

71% 

52% 

50% 

62% 

54% 

5% 

33% 

5% 

8% 

7% 

35% 

5% 

14% 

44% 

35% 

36% 

21% 

41% 

15% 

33% 

31% 

63 

43 

64 

24 

27 

26 

21 

145 

*no opinion answers not included; cells with less than 50% shaded 
Source: responses to open public consultations on designs 

A slight majority of all respondents (with exception of users) considers that the term of 
protection  for  unregistered  Community  design  is  adequate.  This  statement  was 
particularly supported by authorities (71%) and SMEs (62%).  

Almost  a  third  of  all  respondents  (and  more  than  40%  of  owners  and  researchers) 
considers the term of protection to be too short. Among those respondents, the majority 
suggested  a  term  of  protection  of  5  years305.  Others  –  albeit  fewer  –  suggest  a  term  of 
protection  similar  to  the  one  applicable  in  the  United  Kingdom  (i.e.  10  years  after  the 
first sale or 15 years after it was created). Finally, a couple of respondents consider that 
there should be a possibility to renew the term of protection or to allow the conversion of 
the unregistered design into a registered right with retroactive effect. Besides the term of 
protection  as  such,  an  issue  appears  to  be  the  starting  point  of  the  term  of  protection. 
Some  respondents  consider  indeed  that  the  term  of  protection  of  3  years  is  insufficient 
given that is starts as from the divulgation and not as from the exploitation. The type of 
products, and in particular their life cycle, also appears to be an important element to take 
into account when considering the term of protection. A couple of respondents consider 
that an option could be to allow a renewal of the term or to allow the conversion into a 
registered right with retroactive effect. 

A minority (14%) of respondents considered the term protection too long. One third of 
users  of  design  and  other  respondents  were  of  this  opinion  (against  for  instance  5%  of 
owners). Arguments in favour of the same or of a shorter term of protection include the 
need  to  take  into  account  the  decreasing  life  cycle  of  the  products  (notably  as  regards 
fashion) and the need to maintain the attractiveness of registered Community designs.  

305 25 answers. 

100 

 
 
                                                           
Q15. A registered Community or national design can be protected up to 25 years from the date of filing. 
Do you think this term of protection is adequate?* 

Owners 

Users 

Advisers 

Authorities 

Researchers 

Other 

SMEs 

All answers 

Yes 

75% 

54% 

83% 

86% 

73% 

57% 

80% 

74% 

No, it is too long 

No, it is too 
short 

No. of answers* 

4% 

35% 

6% 

3% 

10% 

43% 

8% 

14% 

21% 

11% 

12% 

10% 

17% 

0% 

12% 

12% 

71 

46 

69 

29 

30 

28 

25 

164 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

Around  three  quarters  of  respondents  considered  the  25-year  protection  period  as 
adequate, with biggest support coming from authorities (86%) and the lowest from users 
(54%). Around 43% of other respondents and 35% of users said the protection period is 
too long. Those who thought the current protection is too long mostly opted for 20 years 
instead  (8  answers).  Around  20%  of  owners  and  researchers  considered  the  period  too 
short. Those who considered the period too short mainly suggested protection between 
35 and 100 years, with most answers calling for 50 years (4 answers). Some asked for a 
lifetime protection or the same protection period as in copyright or trade marks. 

Spare parts protection 

The following two questions were asked to all respondents. 

Q16. Are different rules on spare parts protection in the Member States a problem for you?* 

Owners 

Users 

Advisers 

Authorities 

Researchers 

Other 

SMEs 

All answers 

Yes 

74% 

91% 

86% 

80% 

77% 

97% 

94% 

84% 

No 

26% 

9% 

14% 

20% 

23% 

3% 

6% 

16% 

No. of answers* 

50 

45 

51 

20 

22 

34 

17 

130 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

A vast majority of respondents (over 80%) considered that different rules on spare parts 
protection  in  the  EU  are  a  problem,  with  almost  unanimous  support  to  that  statement 
coming from spare parts manufacturers, other respondents, users and SMEs. On the other 
hand,  around  a  quarter  of  owners  and  researchers  and  20%  of  authorities  thought 
otherwise.  

101 

 
 
 
The respondents explained that the current complexity of the system, based on divergent 
approaches of the Member States, makes it difficult for companies (SMEs in particular) 
to operate across the internal market, leads to serious obstacles in the free movement of 
goods and brings legal uncertainty both for professionals and consumers. Fragmentation 
of  the  market  results  in  unequal  chances  for  companies  and  different  offer  of  products 
available to consumers across the Member States. 

Right  holders  complained  about  the  difficulties  in  efficiently  protecting  and  enforcing 
their  rights  across  the  EU.  They  explained  that  lack  of  harmonisation  leads  to  the 
necessity to file multiple national applications, which is both burdensome and costly, and 
makes  understanding  of  the  system  difficult  and  complex  for  economic  actors.  In 
addition,  in  their  view,  lack  of  harmonisation  negatively  impacts  efficiency  of  anti-
counterfeiting strategies and favours forum shopping. 

Other  respondents,  including  design  users  and  independent  producers,  reported  that  the 
current  patchwork  approach  leads  to  difficulties  with  and  high  cost  of  ensuring 
compliance,  agreeing  on  licences,  setting  out  distribution  networks  and  managing 
imports.  They  explained  that  lack  of  harmonisation  harms  manufacturers  in  countries 
without  repair  clause,  as  they  cannot  produce  spare  parts  to  compete  with  companies 
operating in countries where market has been liberalised, including countries outside the 
EU. 

Some respondents stressed that the divergent existing rules make it difficult for customs 
to assess infringing (or not) character of the spare parts crossing the border, in particular 
as to the purpose for which these parts are imported (i.e. for repair purposes or for other 
purposes).  

Finally, some respondents explained that Member States offer different interpretations of 
what is a visible motor vehicle spare part used for repair purpose. Others indicated that 
maintaining  the  ‘freeze  plus  clause’  (Art.  14  of  the  Design  Directive)  is  particularly 
problematic, as this clause was only intended as a temporary solution.  

Q17. Should the rules on spare parts protection be the same in the EU?* 

Owners 

Users 

Advisers 

Authorities 

Researchers 

Other 

SMEs 

All answers 

Yes 

98% 

100% 

97% 

100% 

100% 

97% 

95% 

98% 

No 

2% 

0% 

3% 

0% 

0% 

3% 

5% 

2% 

No. of answers* 

54 

46 

60 

19 

23 

35 

22 

140 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

There  was  unanimity  among  the  respondents  that  the  rules  on  spare  parts  protection 
should be the same in the EU. Respondents stressed that common rules are a necessary 
pre-requisite for a proper functioning of the single market. 

While there was a general agreement on the need for harmonisation of the rules, different 
groups  of  stakeholders  presented  different  opinions  on  the  direction  of  such  future 

102 

 
 
harmonisation. While the representatives of independent manufacturers and associations 
representing  car  users  argued  that  all  the  EU  Member  States  should  introduce  a  repair 
clause in their legislation, right holders’ representatives (including in particular original 
equipment  manufacturers)  argued  against  it.  The  main  arguments  presented  by  the 
respondents concerning the potential abolition of design protection for spare parts offered 
on  the  aftermarket  for  repair  purposes  (introduction  of  the  so-called  repair  clause)  are 
summarised below: 

In support of maintaining design protection for spare parts on the aftermarket (against 
‘repair clause’): 

Respondents opposing introduction of an EU-wide repair clause (vehicle manufacturers, 
design right holders and business associations representing their interests) considered it is 
not justified to exclude spare parts from design protection beyond the restrictions already 
existing under Art. 4(2), 8(1) and 8(2) of the Design Regulation and Art. 3(3), 7(1) and 
7(2)  of  the  Design  Directive  (i.e.  specific  way  of  assessing  novelty  and  individual 
character  for  designs  incorporated  in  products  that  constitute  component  parts  of 
complex products, limitation in protection for designs dictated by their technical function 
and for designs of interconnections). Some respondents believed it is necessary to take a 
step back, and revise the Designs Regulation so as to remove the repair clause (Art. 110) 
and restore full design protection for component parts of complex products. 

Those  respondents  believed  that  lowering  the  protection  level  by  way  of  a  mandatory 
EU-wide repair clause would prove detrimental to designers’ and right holders’ interests. 
Those  respondents  explained  that  introducing  repair  clause  will  lead  to  de  facto 
expropriation of rights, as it would allow third parties to benefit in an unjustified manner 
from the innovation and investment made by the original manufacturer of the spare part, 
removing incentives to innovate and thus decreasing the number of designs developed in 
the  EU.  They  stressed  that  design  development  costs  are  amortised  over  the  entire  life 
cycle of a product. 

Some respondents  questioned the argument  according to  which introduction of a repair 
clause would lead to lowering prices of spare parts on the aftermarket.  They  called for 
examining the situation in countries where the liberalisation has already been introduced.  

In  addition,  some  respondents  believed  that  opening  of  the  spare  parts  market  to 
competition  presents  several  risks  for  the  automotive  sector,  such  as  increased  entry  of 
non-EU  players  (mainly  from  Asia)  and  in  consequence,  loss  of  market  share  of 
European players (manufacturers and subcontractors).  

Finally,  some  respondents  indicated  that  introducing  EU-wide  repair  clause  would 
encourage counterfeiting/product piracy, confuse consumers as to the quality of specific 
products  and  create  safety  risks,  without  however  substantiating  these  arguments  with 
data. 

Against maintaining design protection for spare parts on the aftermarket (for ‘repair 
clause’): 

introduction  of  EU-wide 

Respondents  supporting 
(independent 
manufacturers  and  suppliers  of  spare  parts,  associations  representing  car  users, 
researchers)  indicate  that  design  law  in  the  aftermarket  does  not  fulfil  any  independent 
innovation-promoting function. They believe that lack of competition in the spare parts 
market limits consumers’ choice and leads to excessive prices.  

repair  clause 

Representatives  of  the  automotive  suppliers  argued  for  introduction  of  a  repair  clause 
both for unitary and national titles. They explained that it would make it possible for the 

103 

 
automotive suppliers to sell their parts to the original equipment manufacturers as well as 
to  the  independent  aftermarket,  broadening  consumer’s  choice.  They  have  pointed  out 
again  the  detrimental  impact  of  lack  of  harmonised  rules  in  this  areas,  stressing 
difficulties in understanding what is protected (lack of legal certainty) in which Member 
State,  what  is  making  the  situation  particularly  difficult  for  actors  who  export/import 
parts  from  the  EU  MS  or  from  outside  the  EU.    They  argued  that  an  EU-wide  repair 
clause could contribute to keeping the jobs in the EU and encourage creation of new jobs. 
It  will also give possibility to produce spare parts for markets where  there is no design 
protection for spare parts. 

Some respondents stressed the need to restrict the repair clause to the ‘must-match’ parts. 
They  also  explained  that  such  limitation  should not  extend to  component  parts  that  are 
subject to regular exchange (e.g. toner cartridges).  

Other  respondents  explained  that  the  new  harmonised  rules  should  allow  for 
manufacturing  spare  parts  in  a  manner  that  makes  it  possible  to  completely  restore  the 
appearance of a product, including the possibility of reproducing the trade mark of a third 
party when it is an inherent part of the design of a visible part. 

Some  respondents  also  believed  that  introduction  of  repair  clause  should  be  combined 
with  introducing  a  requirement  to  clearly  indicate  the  origin  of  the  goods  when 
distributing the spare parts (so the consumer is  able to  easily distinguish  between parts 
coming from the original manufacturer/supplier and independent manufacturer/supplier). 

Several respondents stressed that limiting design protection would not be sufficient, and 
that appropriate measures should also be taken to limit possible copyright protection for 
spare parts.  

Finally,  some  respondents  questioned  the  argument  that  spare  parts  provided  on  the 
aftermarket  are  subject  to  safety  risks.  They  stressed  that  safety  relevant  components 
must comply with relevant safety regulations and homologation requirements, which are 
completely independent of design protection.   

Other comments: 

Some  respondents  referred  to  other  possible  ways  of  harmonising  the  rules  on  spare 
parts, e.g.:  

- introducing a limited protection period;  

- introducing a system of compulsory licences;  

- deleting Art. 110 of the Regulation and establishing a defence against infringement 
claims that would be clearly limited to acts of repair/parts replacement so as to restore the 
original appearance of a complex product.  

Some respondents pointed out that introducing limitation for spare parts protection only 
for one sector (e.g. automotive) would be unfair, as it would in their view lead to unequal 
treatment of industry sectors. Other respondents considered it unfair to have different sets 
of rules on protection of designs embedded in spare parts that constitute component parts 
of complex products and ‘non-complex’ products.  

Some  respondents  considered  introduction  of  limitation  for  design  protection  in  the 
secondary market inappropriate in situation where no similar restrictions are provided for 
other  intellectual  property  rights.  They  have  indicated  in  particular  that  such  solution 
seems void of purpose, as it would not prevent spare parts from being protected e.g. by 
copyright law. 

104 

 
Some respondents indicated that any spare part specific design right limitation in the EU 
design  legislation  should  be  abolished,  and  the  matter  should  be  rather  addressed  by 
means of competition law, if needed. 

Finally,  some  respondents  anticipated  significant  difficulties  in  finding  agreement  on 
spare parts protection, and argued that this should not be an impediment to updating and 
modernising EU rules on design protection in other areas. 

Specific questions to creators/owners of designs 

The  questions  below  were  only  asked  to  those  who  identified  themselves  as 
“creators/owners of designs”306. 

Q18. How do you (your members) protect your designs? (multiple choice) 

I register them as Community 
designs at the EUIPO 

I register them as national designs 
at the industrial property offices of 
Member States 

I register them as international 
designs at WIPO 

I rely on unregistered Community 
design protection 

Only 
Own.
** 

Own. 
& 
Use. 

Own. 
& 
Adv. 

Own. 
& 
Auth. 

Own. 
& 
Res. 

Own. 
& 
Oth. 

Own. 
& 
SME 

All 

57% 

83% 

85% 

67% 

78% 

100% 

62% 

71% 

57% 

62% 

67% 

56% 

72% 

100% 

54% 

58% 

32% 

55% 

61% 

44% 

61% 

75% 

31% 

49% 

29% 

45% 

52% 

22% 

44% 

25% 

31% 

40% 

Other 

11% 

21% 

18% 

33% 

33% 

50% 

15% 

17% 

I do not actively seek protection of 
my designs 

11% 

10% 

12% 

0% 

11% 

25% 

23% 

10% 

I don’t own any designs 

0% 

14% 

15% 

33% 

17% 

50% 

23% 

no. of answers 

28 

29 

33 

9 

18 

4 

13 

8% 

77 

*no opinion answers not included; cells with less than 50% shaded 
** answers of those who identified themselves exclusively as owners 
Legend: Own.=owners, Use.=users, Adv.=advisers, Auth.=authorities, Res.=researchers, Oth.=other, 
SME=SMEs, All=all respondents; the last row shows the number of respondents that answered this 
question 
Source: responses to open public consultations on designs 

Registration  of  a  Community  design  at  the  EUIPO  is  the  most  preferred  option  of 
protecting designs, chosen by around 70% of respondents to the survey. This is preferred 
by  those  owners  who  are  also  users,  advisers  or  researchers  (around  80%),  when 
compared  to  those  respondents  who  only  chose  the  ‘owners’  category  or  identified 
themselves as owners and SMEs (around 60%).  

306 Please note that besides “creators/owners of designs” the respondents might have identified themselves 
also as other categories (e.g. users of designs of others, legal advisers, etc.). This is reflected in the tables in 
this  section  where  column  “All”  should  be  interpreted  as  all  who  selected  “creators/owners  of  designs”. 
Column “Only Own.” – those who identified themselves only as “creators/owners of designs” and nothing 
else.  The  remaining  columns  should  be  interpreted  as  follows:  e.g.  column  “Own.  &  Use.”  –  are  those 
“creators/owners of designs” who also identified themselves as “users of designs of others” (but might also 
click other categories), etc. 

105 

 
 
                                                           
The second most popular response (around 60%  of answers) is  registration as  national 
designs at the industrial property offices of Member States. Around half of respondents 
register international designs at WIPO (but only around 30% of those respondents who 
identified themselves only as owners or as owners and SMEs). 

Less  than  half  of  the  respondents  (40%)  relies  on  unregistered  Community  design 
protection. A bit more than half of the respondents that identified themselves as owners 
and  advisers  relies  on  unregistered  Community  design.  Finally,  around  10%  do  not 
actively seek protection. 

Around 20% of respondents uses other protection methods that include copyright, trade 
marks and unfair competition law.  

Although reasons for opting for a specific design are further explained below, replies to 
this question already provide an overview of the main factors playing a role when opting 
for a specific type of design. Among these factors, we can note the territorial scope of the 
business  activity,  the  nature  and  life  cycle  of  the  product,  the  budget,  the  distribution 
chain and the level of protection afforded by other intellectual property rights.  

Q19. What are the reasons for relying on unregistered Community design protection? (multiple choice; % 
of answers selected*) 

Only 
Own.
** 

Own. 
& 
Use. 

Own. 
& 
Adv. 

Own. 
& 
Auth. 

Own. 
& 
Res. 

Own. 
& 
Oth. 

Own. 
& 
SME 

All 

Lack of any formalities 

63% 

69% 

88% 

100% 

88% 

100%  100% 

74% 

Other 

25% 

54% 

35% 

100% 

50% 

100% 

25% 

It is best suited to my needs 

25% 

38% 

41% 

100% 

38% 

100% 

50% 

39% 

35% 

Adequate territorial coverage 

0% 

31% 

29% 

50% 

50% 

0% 

50% 

19% 

no. of answers 

8 

13 

17 

2 

8 

1 

4 

31 

*no opinion answers not included; cells with less than 50% shaded 
** answers of those who identified themselves exclusively as owners 
Legend: Own.=owners, Use.=users, Adv.=advisers, Auth.=authorities, Res.=researchers, Oth.=other, 
SME=SMEs, All=all respondents; the last row shows the number of respondents that answered this 
question 
Source: responses to open public consultations on designs 

Lack  of  any  formalities  was  the  chief  reason  (74%)  for  choosing  the  unregistered 
Community design protection. Around third of those using this kind of protection said it 
is best suited for their needs. Around 20% considered that it provides adequate territorial 
coverage. 

Around 30% named other reasons, such as avoiding cost of protection by registered design 
rights,  ease  of  use,  and  suitability  for  creations  with  a  short  or  seasonal  commercial 
lifespan  (e.g.  fashion,  decoration).  Finally,  some  features  of  the  national  protection  (e.g. 
possibility  to  defer  publication,  presumption  of  ownership  and  validity)  were  also 
mentioned as a reason for opting for national registered designs. 

106 

 
 
Q20.  What  are  the  reasons  for  registering  your  designs  as  national  designs?  (multiple  choice;  %  of 
answers selected*) 

Only 
Own.
** 

Own. 
& 
Use. 

Own. 
& 
Adv. 

Own. 
& 
Auth. 

Own. 
& 
Res. 

Own. 
& 
Oth. 

Own. 
& 
SME 

All 

Other 

50% 

50% 

36% 

40% 

38% 

50% 

29% 

47% 

Adequate territorial coverage 

50% 

33% 

45% 

0% 

54% 

25% 

43% 

44% 

It is best suited to my needs 

13% 

50% 

50% 

60% 

62% 

75% 

57% 

Lower fees 

Easy procedures 

25% 

28% 

36% 

20% 

46% 

50% 

29% 

19% 

28% 

23% 

20% 

31% 

Speed in processing my application 

Better service quality 

0% 

6% 

no. of answers 

16 

11% 

23% 

0% 

18 

0% 

22 

0% 

0% 

5 

15% 

0% 

13 

36% 

27% 

0% 

0% 

0% 

4 

43% 

22% 

0% 

11% 

14% 

2% 

7 

45 

*no opinion answers not included; cells with less than 50% shaded 
** answers of those who identified themselves exclusively as owners 
Legend: Own.=owners, Use.=users, Adv.=advisers, Auth.=authorities, Res.=researchers, Oth.=other, 
SME=SMEs, All=all respondents; the last row shows the number of respondents that answered this 
question 
Source: responses to open public consultations on designs 

Adequate territorial  coverage was top  reason (¬44%) for registering designs at  national 
level. It was especially appreciated by those respondents that identified themselves only 
as  owners  and  as  owners  and  researchers.  Around  third  of  respondents  considered  that 
this  protection  is  best  suited  to  their  needs  (however  it  was  the  top  reason  with  half  of 
more  of  replies  for  those  respondents  that  identified  themselves  as  owners  and  users, 
advisers,  authorities,  SMEs  or  other).  Lower  fees  were  quoted  by  around  a  quarter  of 
owners; similar numbers said they were attracted by easy procedures. Only around 10% 
chose ease of procedures and almost no one the quality of service. 

Around  half  of  respondents  quoted  other  reasons.  Along  the  lines  of  the  propositions 
already  mentioned  in  the  table,  some  respondents  mentioned  the  fact  that  national 
designs  are  more  appropriate  to  their  needs,  in  terms  of  territorial  coverage,  costs  and 
easiness.  Other  reasons  included  the  possibility  to  obtain  priority  documents  from 
national  registries  offices,  the  possibility  to  combine  designs  not  covering  the  same 
classes  into  one  application,  strategic  reasons  (e.g.  application  for  invalidity  are  more 
difficult  to  obtain at  national  level) and enforcement reasons  (Article 82(5) CDR being 
open to interpretations). Finally, some features of the national protection (e.g. possibility 
to  defer  publication,  presumption  of  ownership  and  validity)  were  also  mentioned  as  a 
reason for opting for national registered designs. 

107 

 
 
 
 
 
 
 
 
 
Q21.  What  are  the  reasons  for  registering  your  designs  as  Community  designs?  (multiple  choice;  %  of 
answers selected*) 

Only 
Own.
** 

Own. 
& 
Use. 

Own. 
& 
Adv. 

Own. 
& 
Auth. 

Own. 
& 
Res. 

Own. 
& 
Oth. 

Own. 
& 
SME 

Adequate territorial coverage 

38% 

67% 

82% 

67% 

93% 

75% 

50% 

It is best suited to my needs 

69% 

63% 

57% 

33% 

64% 

50% 

50% 

Easy procedures 

Lower fees 

44% 

58% 

64% 

83% 

71% 

75% 

63% 

44% 

33% 

50% 

33% 

50% 

50% 

25% 

Speed in processing my application 

19% 

33% 

32% 

67% 

50% 

50% 

25% 

Other 

Better service quality 

0% 

0% 

21% 

11% 

17% 

21% 

25% 

13% 

13% 

14% 

17% 

21% 

50% 

13% 

no. of answers 

16 

24 

28 

6 

14 

4 

8 

All 

62% 

62% 

53% 

44% 

29% 

11% 

9% 

55 

*no opinion answers not included; cells with less than 50% shaded 
** answers of those who identified themselves exclusively as owners 
Legend: Own.=owners, Use.=users, Adv.=advisers, Auth.=authorities, Res.=researchers, Oth.=other, 
SME=SMEs, All=all respondents; the last row shows the number of respondents that answered this 
question 
Source: responses to open public consultations on designs 

Almost two thirds of respondents named adequate territorial coverage and best fit to their 
needs as reasons for registering a Community design. While those respondents that only 
identified themselves as owners mainly selected suitability (70%), the territorial coverage 
was  favoured  mostly  by  those  respondents  who  identified  themselves  as  owners  and 
advisers  (80%)  or  owners  and  researchers  (90%).  Around  half  of  respondents  selected 
ease of procedures and slightly less (44%) lower fees. Speed of application was selected 
by  around  30%  of  participants.  Quality  of  services  was  selected  by  around  10%  of 
respondents. 

Other  reasons  mentioned  by  ¬10%  included  adequate  country  coverage  with  relatively 
lower cost. Two respondents praised many features of the Community title, among them 
the possibility to defer publication of design for up to 30 months, the optional naming of 
the designer and the possibility to get EU-wide injunction.  

In general, respondents praised the effective, expeditious and affordable character of the 
Community  design  registration  procedure.  One  respondent  regretted  the  lack  of 
digressive fees for multiple designs applications, making EU multiple design applications 
more costly than others. 

108 

 
 
 
 
 
 
 
 
Q22. What are the reasons for registering your designs as international designs? (multiple choice) 

 % of answers selected* 

Adequate territorial coverage 

It is best suited to my needs 

Lower fees 

Easy procedures 

Other 

Speed in processing my application 

Better service quality 

*no opinion answers not included; cells with less than 50% shaded 
Source: responses to open public consultations on designs 

no. of answers 

All 

55% 

55% 

32% 

32% 

21% 

16% 

13% 

38 

Respondents  who  chose  registration  of  international  design  did  so  mainly  because  of 
adequate  territorial  coverage  and  suitability  to  their  needs  (both  55%  of  answers). 
Around third of respondents did so because of lower fees or ease of procedures. One is 
six because of speed, a little less because of the better quality of service. 

Around 20% gave other reasons, which included need of protection in non-EU countries, 
and having a single application process (instead of different national rules). However, it 
was  noted  that  further  harmonisation  was  still  needed  (e.g.  with  the  US  and  Japan).  A 
couple  mentioned  using  the  Hague  system  to  cover,  besides  EU,  also  Switzerland  and 
Norway. Some respondents consider that, in some cases, an international application can 
be  less  costly.  It  was  for  instance  mentioned  that  an  international  application  covering 
multiple designs can be more cost effective than EU multiple designs applications.  

Q23. In your experience, what are the top three reasons for not obtaining a registered design? (multiple 
choice; % of answers selected*) 

Protection by other intellectual property rights (e.g. trade marks, copyright) serves my needs 

It is too expensive 

Unregistered design protection is sufficient (e.g. useful life of my design is under three years) 

Possible refusal of the application 

Enforcement is too complicated or expensive 

Other 

Possible declaration of invalidity of the registration 

I am not convinced about the added value of registering a design 

Not clear what can be protected 

Registration is too complicated 

*no opinion answers not included; cells with less than 50% shaded 
Source: responses to open public consultations on designs 

109 

no. of answers 

All 

50% 

43% 

33% 

33% 

30% 

20% 

17% 

17% 

13% 

7% 

30 

 
 
 
Those  respondents  who  do  not  actively  seek  protection  and  those  who  rely  on 
unregistered  protection  were  subsequently  asked  about  reasons  for  not  registering  a 
design.  

Half of those respondents stated that protection by other intellectual property rights (e.g. 
trade  marks  or  copyright)  was  sufficient  for  their  needs.  Around  43%  said  that 
registration  is  too  expensive  (this  was  the  first  reason  for  those  respondents  who 
identified themselves only as owners). A third noted that unregistered design protection 
is  sufficient  for them  (e.g. since short time of protection corresponds  to the lifespan of 
their  design).  Similar  number  of  respondents  had  their  applications  refused.  A  bit  less 
than  a  third  noted  that  enforcing  design  rights  is  too  complex  or  expensive.  A  bit  less 
than 20% was worried about possible declaration of invalidity of the registration. Similar 
number was not convinced about the added value of design registration. For around 13% 
respondents  it  was  not  clear  what  can  be  protected  and  7%  consider  the  registration 
process as too complex. 

Around  20%  provided  other  reasons  which  included  high  cost  for  SMEs,  lack  of 
awareness  on  the  scope  and/or  benefits  of  design  protection,  or  fact  that  in  specific 
industries it will be usually the manufacturer of the complex product  (e.g. vehicle) that 
will  file  for  protection  of  the  whole  product,  limiting  the  possibility  for  the  supplier  to 
apply  for  design  protection  for  specific  parts  of  such  product.  Finally  one  respondent 
mentioned  that  too  many  similar  designs  being  already  registered  leads  to  limited 
possibility to enforce design rights. 

Q24. What do you perceive as the top three benefits of having a registered design? (multiple choice; % of 
answers selected*) 

It gives me the right to prevent others from using it without my consent 

It allows me to prove the disclosure and ownership of my design 

It increases the value of my products and strengthens my brand 

It contributes to obtaining a return on investments made 

I do not need to prove that an infringer has copied it 

It acknowledges and protects the marketing value of my design 

It serves as effective marketing tool 

I can make money out of my designs (e.g. sell or license to other parties) 

It increases my competitive edge 

A protected design facilitates cooperation with other parties (like suppliers) 

It rewards and encourages my innovation 

It helps preventing misappropriation of research and development expense 

Other 

*no opinion answers not included; cells with less than 50% shaded 
Source: responses to open public consultations on designs 

no. of answers 

All 

88% 

58% 

25% 

23% 

18% 

17% 

13% 

13% 

12% 

8% 

7% 

5% 

5% 

60 

Those  registering  their  designs  were  asked  about  the  three  key  benefits.  Almost  all 
(¬90%)  valued  the  right  to  prevent  others  from  using  the  design  without  the  owner’s 
consent. A respondent noted in that respect that it is not necessary to prove that a third 
party  has  actively  copied  one’s  product,  a  simple  comparison  between  the  registered 

110 

 
 
design and the infringing design suffices. The speed with which designs infringement are 
remedied was also mentioned. The second most favoured benefit selected by almost 60% 
of respondents was the ability to prove the disclosure and ownership of their design.  

Other reasons were less popular. Around a quarter said that registration helps in getting a 
return  on  investment.  A  bit  less  than  20%  valued  the  fact  that  market  value  of  their 
design is recognised and protected. Slightly more than 10% considered registration as an 
effective  marketing  tool,  giving  a  competitive  edge  to  a  company  and  a  way  to  make 
money  on  their  design  (e.g.  via  licensing  it  out).  A  minority  (below  10%)  though  that 
registration  helps  in  cooperation  with  other  parties  (like  suppliers),  rewards  and 
encourages innovation or helps preventing misappropriation of research and development 
expense. 

Among other reasons (5% of answers) were lower cost than patent protection, defending 
their designs from copiers, or preventing sale of spare parts of lower quality and prevent 
harm to own brand. 

In addition to the reasons already mentioned in the table, a respondent added that designs 
rights  are  ideal  for  companies  seeking  to  protect  a  wide  variety  of  products,  since  the 
registration  procedure  is  simple  and  fast,  and  for  protecting  digital  images  or  other 
elements that are not protectable by other means. 

Q25.  What  do  you perceive  as  the  top  three  costs  of  having  a  registered  design?  (multiple  choice;  %  of 
answers selected*) 

Fees for application/registration, 
publication, renewal etc. 

Litigation costs for pursuing 
infringement cases/invalidity cases 

Preparing documentation for 
registration 

Only 
Own.
** 

Own. 
& 
Use. 

Own. 
& 
Adv. 

Own. 
& 
Auth. 

Own. 
& 
Res. 

Own. 
& 
Oth. 

Own. 
& 
SME 

All 

86% 

59% 

52% 

75% 

50% 

67% 

57% 

68% 

48% 

68% 

44% 

50% 

50% 

33% 

71% 

54% 

48% 

32% 

48% 

75% 

42% 

100% 

14% 

42% 

Cost of legal advice 

29% 

32% 

32% 

50% 

33% 

Searching for prior art 

14% 

27% 

32% 

25% 

42% 

0% 

0% 

71% 

30% 

0% 

21% 

Costs of defence against 
applications for declaration of 
invalidity 

Time needed to register/maintain a 
design 

Identifying those who use your 
design without permission 

Monitoring the registers of 
industrial property offices for 
conflicting later filings 

5% 

32% 

20% 

25% 

33% 

33% 

0% 

19% 

5% 

18% 

24% 

0% 

0% 

33% 

29% 

14% 

19% 

5% 

8% 

0% 

0% 

0% 

43% 

12% 

10% 

14% 

8% 

0% 

17% 

0% 

14% 

9% 

Other 

5% 

no. of answers 

21 

0% 

22 

12% 

0% 

17% 

33% 

0% 

25 

4 

12 

3 

7 

7% 

57 

*no opinion answers not included; cells with less than 50% shaded 
** answers of those who identified themselves exclusively as owners 
Legend: Own.=owners, Use.=users, Adv.=advisers, Auth.=authorities, Res.=researchers, Oth.=other, 
SME=SMEs, All=all respondents; the last row shows the number of respondents that answered this 

111 

 
 
question 
Source: responses to open public consultations on designs 

Those registering their designs  were  also  asked about  the three key costs. Almost  70% 
selected fees for application/registration, publication, renewal etc. (chosen by nearly 90% 
of  those  respondents  who  identified  themselves  only  as  owners).  More  than  half  chose 
litigation costs for pursuing infringement cases/invalidity cases, although these costs only 
occur  on  a  case-by-case  basis.  For  around  40%  preparation  of  documentation  for 
registration was a major burden.  

Cost of legal advice was chosen by around 30% (and over 70% of those respondents who 
identified themselves as owners and SMEs). 21% chose searching for prior art, although 
one respondent mentioned that this is not done on a regular basis. Similar number found 
costs  of  defence  against  applications  for  declaration  of  invalidity  significant.  Time 
needed  to  register/maintain  a  design  was  considered  major  for  around  15%  of 
respondents.  12%  found  it  expensive  to  identify  those  who  use  their  design  without 
permission. Less than 10% selected monitoring the registers of industrial property offices 
for conflicting later filings.  

Q26. Based on your experience, do the benefits of design protection outweigh the costs in cases of (% of 
Benefits much greater than costs and Benefits greater than costs answers) 

Unregistered Community design protection 

Registered Community design protection 

International design protection 

Registered national design protection in a Member State 

All 

95% 

93% 

82% 

50% 

44 

Max no. of answers 

*“benefits equal to costs” not included, thus the residual to 100 represents “benefits lower than costs” 
answers 

Source: responses to open public consultations on designs 

All  those  that  rely  on  some  form  of  design  protection  were  asked  to  compare  their 
benefits and costs.  

Those who reply were almost unanimous that benefits outweigh the cost for unregistered 
Community design (95%) and registered Community design (93%). Around 80% said so 
for  international  design  protection.  Respondents  were  split  on  benefit/cost  ratio  for 
national  protection.  As  regards  spare  parts,  two  respondents  mentioned  that  the  lack  of 
harmonisation led to costs outweighing benefits. 

112 

 
 
 
 
 
 
 
 
 
Q27. How confident are you about the validity and scope of protection of your registered design(s)?* 

Confident 

Not confident 

No. of answers* 

Only  Owners** 

Owners & Users 

Owners & Advisers 

Owners & Authorities 

Owners & Researchers 

Owners & Other 

Owners & SMEs 

All 

81% 

53% 

68% 

75% 

64% 

100% 

80% 

71% 

19% 

47% 

32% 

25% 

36% 

0% 

20% 

29% 

16 

19 

22 

4 

11 

3 

5 

48 

*no opinion answers not included; cells with less than 50% shaded  
** answers of those who identified themselves exclusively as owners 
Source: responses to open public consultations on designs 

Majority (70%) of respondents was very confident or rather confident about the validity 
and  scope  of  protection  of  their  registered  designs.  Those  respondents  that  identified 
themselves only as owners had the highest confidence levels (80%). 

In their answers the respondents indicated the following factors as negatively impacting 
their  confidence:    lack  of  substantive  examination,  complexity  in  assessing  novelty, 
difficulties in running an exhaustive prior art search before applying for protection, and 
an insufficient – in their view – case-law on the scope of protection. Several respondents 
referred  to  high  ‘density’  of  designs  registered  in  certain  sectors  (e.g.  design,  fashion), 
what in their view leads to limiting the scope of protection and makes it challenging to 
prove  novelty  of  a  design  (due  to  very  small  variations  between  different  designs 
registered). Many respondents referred to searches they run before filing for registration, 
and explained that (high) quality of such searches translates in (high) confidence in scope 
of  protection  and  validity.  Similarly,  some  respondents  pointed  to  the  role  of  gaining 
experience  in  using  registration  procedures  (the more  applications  one  files,  the  better 
strategy, and result in higher confidence in the protection obtained).    

Q28. Before registering your design, did you search for prior similar designs?* 

Only Owners** 

Owners & Users 

Owners & Advisers 

Owners & Authorities 

Owners & Researchers 

Owners & Other 

Owners & SMEs 

All  

Yes 

80% 

71% 

71% 

75% 

73% 

67% 

86% 

72% 

No 

20% 

29% 

29% 

25% 

27% 

33% 

14% 

28% 

No. of answers* 

20 

21 

24 

4 

11 

3 

7 

54 

*no opinion answers not included; cells with less than 50% shaded  
** answers of those who identified themselves exclusively as owners 
Source: responses to open public consultations on designs 

113 

 
 
 
A  clear  majority  of  respondents  (72%)  searched  for  prior  similar  designs  before 
registering their design. In particular those respondents that identified themselves only as 
owners or as owners and SMEs conducted such prior art searches. 

Q29.  If  yes,  how  did  you  do  that  search?  (multiple  choice;  %  of  answers  selected  –  only  those  who 
answered Yes to Q28) 

I searched in the database of 
EUIPO 

I searched in the database provided 
by WIPO 

Only 
Own.
** 

Own. 
& 
Use. 

Own. 
& 
Adv. 

Own. 
& 
Auth. 

Own. 
& 
Res. 

Own. 
& 
Oth. 

Own. 
& 
SME 

All 

56% 

60% 

82% 

100% 

88% 

100% 

67% 

64% 

50% 

53% 

82% 

100% 

88% 

100% 

50% 

59% 

I searched on the internet 

56% 

47% 

65% 

0% 

63% 

50% 

33% 

56% 

I searched in the database of the 
competent office of a Member State 

I used a professional service to 
conduct the search for me 

56% 

47% 

65% 

100% 

75% 

100% 

33% 

54% 

25% 

53% 

47% 

33% 

75% 

0% 

17% 

36% 

Other 

25% 

27% 

12% 

0% 

13% 

0% 

17% 

23% 

no. of answers 

16 

15 

17 

3 

8 

2 

6 

39 

cells with less than 50% shaded 
** answers of those who identified themselves exclusively as owners 
Legend: Own.=owners, Use.=users, Adv.=advisers, Auth.=authorities, Res.=researchers, Oth.=other, 
SME=SMEs, All=all respondents; the last row shows the number of respondents that answered this 
question 
Source: responses to open public consultations on designs 

Those  who  searched  for  prior  similar  designs  before  registering  their  own,  were  asked 
about their searching methods. 

Most popular is the EUIPO database (64%), followed by the WIPO database (59%), the 
internet (56%) and the databases of the national offices (54%). Compared to other users, 
those users who identified themselves also as SMEs execute less searches in general but 
make relatively much use of the EUIPO database. 

Seven respondents provided cost of search by professional services. These costs ranged 
between EUR 200 and EUR 10 000, with average reported cost between EUR 2 000 and 
EUR 6 000. 

Q30. If yes, why did you conduct that search? (multiple choice; %  of answers selected  – only those who 
answered Yes to Q28) 

To avoid infringing prior design rights 

To search for prior designs which may invalidate my filing after registration 

Other 

To investigate about the launch of new products 

To get inspiration for creating a new design 

cells with less than 50% shaded 

no. of answers 

114 

All 

74% 

72% 

15% 

8% 

5% 

39 

 
 
 
Source: responses to open public consultations on designs 

Those  who  searched  for  prior  similar  designs  before  registering  their  own,  were  asked 
about reasons for doing so. 

The main reasons for conducting such a search were (74%) in order to avoid infringing 
prior design rights or (72%) to search for prior designs which may invalidate ones filing 
after registration.  

Specific questions to both creators/owners and lawyers/legal advisers 

The  questions  below  were  only  asked  to  those  who  identified  themselves  as 
“creators/owners” and/or “lawyers/legal advisers”307. 

Q31. The EUIPO currently does not examine whether a design is new before registering it as registered 
Community  design.  This  allows  the  EUIPO  to  keep  formalities  to  a  minimum  and  register  a  design 
within  a  couple  of  days.  Despite  the  complexity  and  technical  constraints  in  searching  for  conflicting 
prior  art  on  a  worldwide  basis  (e.g.  due  to  existence  of  unregistered  designs),  do  you  think  that  the 
EUIPO should carry out some novelty examination?* 

Yes, even if it would 
considerably increase 
the fees and 
registration time 

Yes, but only if that 
examination would 
be offered as an 
optional, fee-based 
service 

No, but special tools 
could be offered to be 
able to conduct image 
searches in databases 
either for payment or 
free of charge 

No 

No. of 
answers
* 

All  

10% 

24% 

38% 

28% 

90 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

A  majority  of  the  respondents  (66%)  do  not  favour  the  introduction  of  a  mandatory 
novelty  examination  by  the  EUIPO.  However,  most  of  them  (38%)  would  like  special 
tools to be on offer for doing image searches in databases.  Only 10% of all respondents 
would favour a mandatory search.  

The  most  raised  argument  against  examination  is  that  it  would  increase  costs,  delay 
registration  significantly  and  would  not  be  exhaustive.  Searching  per  class  is  useless 
since  registered  Community  design  confers  on  its  holder  the  exclusive  right  to  use  the 
relevant  design  in  all  types  of  products,  and  not  only  in  the  product  indicated  in  the 
application  for  registration.  Searching  for  earlier  registered  designs  alone  is  considered 
not sufficient, since earlier non-registered rights (e.g. designs and copyrights) can also be 
novelty destroying. According to one respondent, experience with novelty examination in 
Japan  shows  that  addressing  inconsistent  or  unfounded  objections,  is  costly  and  time-
consuming.  It  is  further  argued  that  the  total  number  of  disputes  before  the  ordinary 
courts does not seem to justify a complex official examination procedure. 

The  main  advantage  of  the  system  –  quick  and  efficient  registration  –  should  not  be 
impaired.  Therefore,  most  respondents  prefer  that,  either  better  image  search  tools  are 

307 Please note that besides “creators/owners” and/or “lawyers/legal advisers” the respondents might have 
identified  themselves  also  as  other  categories  (e.g.  users  of  designs  of  others,  researchers  etc.).  This  is 
reflected  in  the  tables  in  this  section  where  column  “All”  should  be  interpreted  as  all  who  selected 
“creators/owners” and/or “lawyers/legal advisers”.  

115 

 
 
                                                           
made  available,  or  that  a  novelty  search  by  the  EUIPO  is  optional.  This  would 
counterbalance the lack of examination and increase legal certainty. 

As argument in  favour of novelty examination it is  mentioned that this  would  decrease 
the amount of invalid registrations on the register. Currently there are too many invalid 
designs  on the register  which leads to  uncertainty  and unjust  situations in court.  Under 
the current system those accused of design infringement have to prove the invalidity of 
the  invoked  designs  rights.  This  puts  an  unfair  burden  on  the  defendant,  in  particular 
SMEs,  who  would  have  to  conduct  costly  searches  for  novelty  destroying  prior  art, 
whereas the design holder may have filed its design without having conducted any prior 
art search at  all. The design right  holder, on the other hand, may not  have conducted a 
search before filing.   

As a counterbalance solution, it is proposed by various respondents, mostly associations 
representing  spare  part  manufacturers,  that  the  assumption  that  a  design  registration  is 
valid should only become effective after at least some extent of research for prior art has 
been  conducted  without  revealing  any  conflicting  prior  art.  Similarly,  one  association 
suggested  that,  design  holders  could  be  required,  before  starting  litigation,  to  obtain  a 
search report from the EUIPO together with a written opinion. A similar system has been 
introduced in the Spanish Patent Law for unexamined utility models and also in Belgium 
for  national  patents.  Another  suggestion  would  be  to  follow  the  system  of  the  USPTO 
where the users can choose between a verified design and unverified model accessible at 
a lower cost.  

Q32.  What 
experience 
(% of Very good and Rather good answers*) 

your 

is 

with 

design 

registration 

at 

the 

EUIPO? 

Possibility to do it electronically 

General performance related to Community designs 

Speed of registration process 

Ease of application process and forms 

Level of fees 

Transparency of registration process 

Supplied information on how to register a design 

Procedure for invalidating a registered design 

* no opinion answers not included, thus the residual to 100 represents “bad” answers;  
Source: responses to open public consultations on designs 

Max no. of answers 

All 

99% 

97% 

96% 

96% 

91% 

86% 

84% 

82% 

83 

Overall the respondents  are very satisfied with  the design registration at  the EUIPO, in 
particular the possibility to  file electronically, the speed of  registration process,  ease of 
application process and forms and level of fees are highly appreciated.  

As  points  for  improvements  were  mentioned  the  quality  of  invalidity  proceedings  and 
decisions and the transparency of the registration process. The invalidity decisions would 
improve  if  they  more  clearly  identified  the  legal  principles  applied  and  explained  why 
and  how  these  have  been  applied  in  the  individual  case.  As  regards  the  registration 
process, a greater alignment with the EUIPO’s procedures relating to trade marks would 
be welcome where each stage of the process is mirrored online. 

116 

 
 
Q33.  What  is  your  experience  with  design  registration  at  the  National  Industrial  Property  Office(s)? 
(% of Very good and Rather good answers*) 

Possibility to do it electronically 

Transparency of registration process 

Ease of application process and forms 

Supplied information on how to register a design 

Level of fees 

General performance related to national designs 

Speed of registration process 

Procedure for invalidating a registered design 

All 

90% 

84% 

83% 

81% 

80% 

79% 

73% 

67% 

65 

Max no. of answers 

* no opinion answers not included, thus the residual to 100 represents “bad” answers; cells with less than 
50% shaded 
Source: responses to open public consultations on designs 

The results are very similar as regards the experience with the national industrial property 
offices, although the percentages are about 12% lower than those concerning the EUIPO.   

Q34. Based on your experience, do you consider that registered designs provide a useful protection against 
unauthorised use of those designs by a third party?*  

All  

Yes 

93% 

No 

7% 

No. of answers* 

99 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

Almost  all  of  the  respondents  considered  that  registered  designs  provide  a  useful 
protection against unauthorised use by a third party. 

The  few  respondents  who  replied  that  the  protection  is  not  sufficiently  useful  believed 
that in cases where design is copied in 100% it may be difficult to identify and/or prove 
an  infringement,  the  costs  of  litigation  can  be  high,  and  that  substantive  examination 
would be necessary to ensure high level of protection. 

Specific questions to creators/owners of designs 

The  questions  below  were  only  asked  to  those  who  identified  themselves  as 
“creators/owners of designs”308. 

Q35.  Have  you/members  of  your  organisation  ever  sued  someone  in  the  EU  for unauthorised  use  of  your 
design?* 

All  

Yes 

66% 

No 

34% 

No. of answers* 

61 

*no opinion answers not included; cells with less than 50% shaded  

308 Please note that besides “creators/owners of designs” the respondents might have identified themselves 
also as other categories (e.g. users of designs of others, legal advisers, etc.). This is reflected in the tables in 
this section where column “All” should be interpreted as all who selected “creators/owners of designs”. 

117 

 
 
 
 
                                                           
Source: responses to open public consultations on designs 

Almost twice as many respondents sued someone in the EU for unauthorised use of their 
design, as compared with those who did not.  

Q36. If yes, on which form of protection did you base your legal action? (multiple choice; % of answers 
selected – only those who answered Yes to Q35) 

Registered Community design 

National design registered in a Member State 

International design registered at WIPO 

Unregistered Community design 

Other 

cells with less than 50% shaded 
Source: responses to open public consultations on designs 

no. of answers 

All 

88% 

78% 

60% 

53% 

20% 

40 

Most  of  the  respondents  relied  on  the  registered  Community  design  as  a  base  for  their 
legal  action,  followed  by  national  registered  design,  international  design  registered  via 
WIPO, and unregistered Community design. Those few respondents  who indicated that 
they  rely  on  other  legal  basis,  referred  to  copyright  protection,  law  against  unfair 
competition (passing off), protection awarded for figurative or 3D trade marks, national 
unregistered design right (UK), utility models, and patents.  

Q37. Have you/members of your organisation ever requested to invalidate a design because it was the 
same as or similar to the design you own/created?* 

All  

Yes 

56% 

No 

44% 

No. of answers* 

59 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

Many  respondents  reported  that  they  have  experience  in  launching  invalidation 
proceedings. 

Specific questions to both creators/owners and lawyers/legal advisers 

The  questions  below  were  only  asked  to  those  who  identified  themselves  as 
“creators/owners” and/or “lawyers/legal advisers”309. 

Q38. Based on your experience, please rank the forms of protecting a design in terms of your chances to 
win  an  invalidity  or  an  infringement  action  (on  the  scale  from  1  (best)  to  5  (worst))  (*average  rank 
presented) 

Registered Community design 

All 

1.96 

309 Please note that besides “creators/owners” and/or “lawyers/legal advisers” the respondents might have 
identified  themselves  also  as  other  categories  (e.g.  users  of  designs  of  others,  researchers  etc.).  This  is 
reflected  in  the  table  in  this  section  where  column  “All”  should  be  interpreted  as  all  who  selected 
“creators/owners” and/or “lawyers/legal advisers”. 

118 

 
 
 
 
                                                           
National design registered in a Member State 

International design registered at WIPO 

Unregistered Community design 

2.02 

2.21 

3.27 

47 

Max no. of answers 

* “Impossible to say” and “No experience” answers not included, cells with more than 2.5 shaded 
Source: responses to open public consultations on designs 

Many  respondents  have  difficulties  in  answering  this  question,  what  is  reflected  in  a 
relatively  high  number  of  them  choosing  the  option  ‘impossible  to  say’  as  an  answer. 
Many indicated that chances of success should be determined on a case-by-case basis, or 
that  they  lay  within  the  discretion  of  the  judge/authority  handling  the  case.  Those 
respondents, who decided to rank different protection tools, estimated that relying on the 
national title gives the best chances to win an invalidity or an infringement action. Such 
chances  were  considered  the  lowest  when  applicant  relies  on  unregistered  Community 
design. 

Some respondents believed that chances of success of infringement and invalidity action 
before  the  courts  are  equal  in  relation  to  national  design  registrations  and  registered 
Community  designs.  Some  respondents  indicated  that  chances  for  success  are  higher 
when  the  case  is  heard  by  a  specialised  IP  court,  as  compared  with  a  general  court, 
independent from the protection title indicated as legal basis. 

Specific questions to lawyers/legal advisers, authorities and academia 

The  questions  below  were  only  asked  to  those  who  identified  themselves  as 
“lawyers/legal advisers” and/or “authorities” and/or “lecturers/researchers”310. 

Q39. Based on your knowledge of the design protection systems in the EU, please evaluate the following 
elements in the legislation and its application by industrial property offices and in courts (% of Very clear 
and Clear answers*) 

The definition of a “design”, a “product” and a “complex product” 

The requirements for protection (e.g. related to the need of being “visible”) 

The scope of design protection (e.g. as to how to determine the individual character 
of a design) 

Max no. of answers 

All 

73% 

55% 

47% 

86 

* no opinion answers not included, thus the residual to 100 represents “not clear” answers; cells with less 
than 50% shaded 
Source: responses to open public consultations on designs 

Definitions  

Majority  of  the  respondents  considered  definitions  of  a  ‘design’,  a  ‘product’,  and  a 
‘complex product’ clear or very clear.  

310 Please note that besides “lawyers/legal advisers” and/or “authorities” and/or “lecturers/researchers” the 
respondents might have identified themselves also as other categories (e.g. users of designs of others, etc.). 
Therefore  “All”  should  be  interpreted  as  all  who  selected  “lawyers/legal  advisers”  and/or  “authorities” 
and/or “lecturers/researchers”. 

119 

 
 
                                                           
Some  respondents  believed  that  these  definitions  should  be  clarified  to  account  for 
products of specific nature, such as e.g. logos, patterns or packaging. Several respondents 
believed  that  there  is  a  need  to  clarify  whether  virtual  designs,  animated  designs  and 
graphical  user  interfaces  can  be  understood  as  a  product,  and  thus  benefit  from  design 
protection  (in  particular  to  specify  that  those  should  not  be  considered  to  be  computer 
programmes,  and  thus  excluded  from  protection).  Some  respondents  believed  that 
definition of a ‘complex product’ should be narrowed down, and only apply to complex 
machinery.  

Protection requirements 

While  the  number  of  respondents  believing  that  the  requirements  for  design  protection 
are  clear  or  very  clear  prevailed,  many  believed  the  opposite.  In  particular,  many 
respondents called for clarification of the visibility requirement. While some respondents 
believed  that  a  legal  definition  should  be  introduced,  others  opted  for  clarification  via 
guidance  or  further  case-law,  or  called  for  removing  the  visibility  requirement  all 
together.  

In  addition,  some  respondents  pointed  to  difficulties  in  assessing  the  visibility 
requirement, and indicated it needs to  be clear to  whom the design needs to  be visible, 
and  in  which  situation  exactly.  While  some  respondents  asked  to  clarify  that  a  design 
does  not  have  to  be  visible  in  any  specific  time  or  at  any  particular  situation  to  attract 
protection,  others  opted  for  indicating  a  specific  situation  during  which  assessment 
should be done (e.g. during normal use of a product – as already indicated for component 
parts of a complex product, or during offering the product for purchase).  

The respondents also believed there is need to clarify eligibility for protection for designs 
that are only visible part of the time. While this issue was partly addressed in different 
court  and  EUIPO  decisions,  both  in  relation  to  visibility  of  parts  of  products  and 
components  of  complex  products,  the  respondents  still  consider  there  is  insufficient 
clarity  and  that  the  rules  should  be  harmonised.  Some  respondents  considered  that  this 
issue is settled for complex products. Some respondents pointed out that the concepts of 
“end-user” and “informed user” are not sufficiently clear, what brings further difficulties 
in  assessing  visibility.  One  respondent  pointed  out  that  some  courts  seem  to  be  still 
confused  about  the  test  to  be  applied,  and  refer  to  an  average  consumer,  mixing  the 
notions used by design and trade mark law. 

Finally, some respondents believed that the notion of “technical function” used in Art. 7 
(1) of the Directive and Art. 8 (1) of the Regulation ought to be construed narrowly. They 
have pointed to different interpretations given to this notion in practice – on the one hand 
understanding it as  a design feature which solely serves a technical function in the sense 
that  the  design  of  that  feature  enables  the  solution  of  a  technical  problem  (the  narrow 
interpretation), and on the other hand understanding it as mere functionality. 

Scope of protection 

The number of respondents who believe that the scope of design protection is not clear or 
very unclear was higher than those considering it clear or very clear. 

Some respondents indicated in particular, that the notions used to describe the scope of 
protection, such as “individual character” or “overall impression”, are very abstract and 
thus  hard  to  clarify,  with  their  interpretation  depending  very  much  on  the  product 
category.  Some  respondents  explained  that  it  is  not  predictable  if  a  new  design  has 
individual  character,  especially  if  it  consists  in  a  new  version  of  a  previously  existent 
design.  On  the  other  hand,  some  respondents  pointed  out  that  they  disagree  with  the 

120 

 
recommendation  proposed  in  the  Legal  Study311  to  introduce  into  the  law  clarifications 
on how to determine the individual character of a design. 

The respondents also indicated that the scope of protection awarded by a design right is 
closely  linked  to  the  number  of  representations  allowed  in  the  application.  Many 
respondents  believe  that  the  limited  number  of  representations  currently  allowed  limits 
what can be protected in practice, and often brings more confusion than clarity. 

Rights conferred 

Q40. Do you consider that the current scope of design rights, including limitations, provides sufficient 
protection against third parties copying a protected design by means of 3D printing?* 

All 

Yes 

50% 

No 

50% 

No. of answers* 

66 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

Respondents  are  split  as  to  whether  the  design  acquis  provides  insufficient  protection 
against copying protected designs through 3D printing.  

Should 3D printing become more widespread, the private use exception combined with 
3D  printing  is  seen  as  potentially  damaging  for  creators.  Some  considered  that  ad  hoc 
rules  are  needed  in  this  field.  For  instance,  one  respondent  asked  for  clarifying  that 
instructions  for  the  manufacture  of  an  infringing  product  constitute  an  infringement. 
Along  these  lines,  others  considered  that  providing  a  code  to  print  a  product  should 
constitute  an  infringement.  Finally,  some  considered  that  the  notion  of  infringement 
should  cover  acts  of  creating  or  sharing  digital  representations  leading  to  infringing 
copies. This is in line with another suggestion according to which designs rights should 
extend  to  the  digital  representation  of  the  designs.  Other  suggestions  included  the 
adaptation of Directive 2004/48/EC to take into account this new technology, the use of 
technical  protection  measures,  the  payment  of  a  fee,  the  limitation  of  the  private  copy 
exception, and the introduction of provisions as regards contributory infringement.  

Q41. Do you think that the scope of design rights should allow preventing third parties from transiting 
counterfeit design goods through the Union territory even if the goods are not intended to be placed on 
the Union market?* 

All 

Yes 

90% 

No 

10% 

No. of answers* 

77 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

A  large  majority  of  respondents  (90%)  is  in  favour  of  prohibiting  the  transit  of 
counterfeit goods in the EU territory. This is also reflected in the open replies, in which 
many respondents insisted on the importance to align the design rules on the trade marks 
rules  as  regards  the  transit  of  counterfeit  goods.  Respondents  having  replied  in  the 
positive  considered  this  important  to  ensure  an  efficient  fight  against  counterfeiting. 
Some underlined the risk, inherent to any transit activities, that goods will in the end be 

311 https://ec.europa.eu/growth/content/legal-review-industrial-design-protection-europe-0_en 

121 

 
 
 
                                                           
placed on the EU market. Finally, some considered that the lack of alignment with trade 
mark law is  not  justified.  It  is  in  general  considered that the designs law  provisions on 
transit should mirror, without going beyond, what is provided in trade mark law. Among 
the few negative replies, one respondent mentioned the disadvantage likely to happen for 
EU  transporters.  Another  respondent  considered  that  this  debate  should  be  examined 
together with the one around the repair clause. 

Grounds for invalidity 

Q42. Do you think that lack of clarity and consistency in the representation should be an explicit ground 
for invalidity of a design?* 

All 

Yes 

63% 

No 

37% 

No. of answers* 

78 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

A majority of the respondents (63%) thinks that the lack of clarity and consistency in the 
representation should be an explicit ground for invalidity of a design. They argue that for 
the  sake  of  legal  certainty,  third  parties  should  understand  the  extent  of  the  exclusive 
right covered by the design. Therefore, lack of clarity and consistency of a design should 
be  considered  a  ground  for  invalidity  to  the  extent  that  it  does  not  make  it  possible  to 
determine the design’s scope of protection.  

Others  argue  that  lack  of  clarity  and  inconsistencies  of  the  representations  should  only 
affect  the  scope  of  protection.  Quite  a  number  of  respondents,  mainly  major  business 
associations representing right holders, point out that no such additional ground would be 
necessary if there was a possibility to provide a higher number or even unlimited number 
of representations and clearer representations during the application phase e.g. by means 
of video or 3D representations.  One of these associations also mentions that the lack of 
clarity  and  consistency  in  the  representation  can  already  be  invoked  as  ground  for 
invalidity  under  Article  25  (1)  lit  a  CDR  for  failure  to  satisfy  the  conditions  set  out  in 
Article 3 lit a CDR.  

Procedural issues 

Q43. In your view, are the current requirements for the representation of Community designs under the 
Community  Design  Regulation  and  the  respective  Implementing  Regulation  (EC)  No  2245/2002  (e.g. 
means  of  representation  and  their  combination,  static  views,  maximum  number  of  views,  neutral 
background)  appropriate  to  show  designs  with  sufficient  clarity  and  precision,  both  for  tangible 
products and non-tangible products (e.g. animated designs, graphical user interfaces)?* 

All 

Yes 

46% 

No 

54% 

No. of answers* 

72 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

A  small  majority  of  respondents  (54%)  thinks  that  the  current  requirements  for  the 
representation of Community designs under the CDR and the respective IR (e.g. means 
of representation and their combination, static views, maximum number of views, neutral 
background)  are  not  appropriate  to  show  designs  with  sufficient  clarity  and  precision, 
both  for  tangible  product  and  non-tangible  products  (e.g.  animated  designs,  graphical 
user interfaces). The most criticised requirements were the limited number of views and 
the limited means of representation. 

122 

 
 
 
All respondents that provided further comments agree that the maximum number of static 
views should be increased. Having a smaller number of views can limit the ability for a 
designer  to  show  the  design  fully  and  can  create  priority  issues.  Some  designs  require 
more views, for instance to show detail of a more complex design, or to show a moving 
design. Seven views can be insufficient to comply with the requirements in national laws 
of other countries that are part of The Hague system of International Design registration, 
that  allow  for  more  or  even  an  unlimited  number  of  view.  Moreover,  the  fact  that  no 
amended view can be filed during the review period makes the system too rigid. It would 
be more appropriate to allow for the possibility of accepting modifications, with a change 
of the date of deposit accordingly, as long as the model is not published. 

The  respondents  that  provided  further  feedback  also  agreed  that  other  means  of 
representation  should  be  allowed  to  protect  a  wider  range  of  designs  or  designs  more 
effectively. The current  graphic representations are in  certain  cases not  apt  to  represent 
designs which have different forms of appearance, state or assembly (modular systems, 
on off, open closed, etc.), or to show a set sequence or movement. Some respondents also 
mentioned  that  a  wider  range  of  file  formats  (e.g.  3D  files,  video  animations,  higher-
resolution file formats for static images) and an extension of the permitted design types 
should be introduced. By amending the product definition, design protect should also be 
available for manifestations that are not  physically defined as two or three-dimensional 
objects (e.g. animated designs and graphical user interfaces). 

Q44. Are you aware of any problems in relation to the option to file a description of a design under the 
Community design regime, national law or the international Hague system?* 

All 

Yes 

34% 

No 

66% 

No. of answers* 

68 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

A majority of respondents (66%) is not aware of any problems in relation to the option to 
file a description of a design under the Community design regime, national law or in the 
international Hague system.  

However, 34% of respondents thinks otherwise. Most of them expressed concerns about 
the  limited  utility  attributed  to  descriptions.  Under  the  Community  design  regime,  any 
description  filed  is  not  part  of  the  design  and  does  therefore  not  affect  the  scope  of 
protection. Yet, a description is considered to be a good tool to clarify what is aimed to 
be  protected.  The  absence  of  a  description  can  lead  to  difficulties  when  assessing  the 
scope  of  protection,  as  exemplified  by  a  respondent:  should  the  absence  of  surface 
decoration on a design be seen as a feature in its own right or as meaning that the design 
is for the shape only? Some respondents therefore are in favour of allowing a description 
as  an  interpretative,  or  even  as  a  decisive  factor  (e.g.  as  a  verbal  disclaimer)  for 
determining the subject-matter of protection. It is mentioned that in the United Kingdom 
and  the  United  States,  for  instance,  a  description  or  verbal  disclaimer  can  be  used  to 
explain  whether  any  particular  features  shown  in  the  representations  form  part  of  the 
design or not. This option is not available in the Community design system, which can 
result in difficulties in determining the scope of protection. 

123 

 
 
 
 
 
Q45. The Community Design Regulation allows for the filing of a specimen where the application is for 
a  two-dimensional  design  (e.g.  a  piece  of  textile),  and  deferment  of  publication  is  requested.  Do  you 
consider this option still to be relevant and meeting current business needs?* 

All 

Yes 

45% 

No 

55% 

No. of answers* 

51 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

A  majority  of  respondents  (55%)  thinks  that  the  filing  of  specimen  is  not  relevant  any 
more.  It  is  pointed  out  that  this  option  is  not  often  used  and  the  scope  of  protection  is 
determined  by  the  views  in  the  record  while  detailed  aspects  of  the  design  that  are  not 
visible  could  be  subject  of  a  description.  Moreover,  the  deposit  of  specimens  appears 
obsolete  at  the  time  of  online  deposits.  The  physical  submission  of  specimen  can  be 
easily replaced by a graphic/photographic representation on a digital data carrier. 

According to the feedback received from the French IP office (INPI) France, for instance, 
no longer accepts the deposit of the specimen.  

However, some respondents  (45%) still consider specimens of great  importance for the 
fashion  industry  since  it  allows  for  a  clear  filing  date  while  keeping  the  design 
confidentiality. 

Q46.  In  your  view,  are  there  any  specific  provisions  or  requirements/conditions  in  the  Community 
Design  Regulation  or  the  respective  Implementing  Regulation  (EC)  No  2245/2002  in  relation  to 
procedures before the EUIPO (e.g. for the application or registration of a registered Community design) 
which you consider to be inappropriately complex or rigid, or generating unnecessary burdens for users 
of the system?* 

All 

Yes 

47% 

No 

53% 

No. of answers* 

55 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

A  majority  of 
there  are  no  specific  procedural 
requirements/conditions in the Community Design Regulations which are inappropriately 
complex or rigid, or generating unnecessary burdens for users of the system.  

the  respondents 

thinks 

that 

However, many  respondents  (47%) think otherwise.  In particular, the fact  that multiple 
design applications have to belong to the same product class is considered very rigid and 
unfair. One respondent explained that it means that some products such as “hairdryers” 
and  “parts  of  hairdryers”  cannot  be  included  in  the  same  multiple  application  whereas 
other  completely  unrelated  products  (“chair”  and  “table”)  can.  Also  the  fact  that 
deficiencies  relating  to  the  view  requirements  lead  to  a  later  filing  date,  is  considered 
very rigid. 

Q47.  Are  you  aware  of  any  (other)  specific  issue  in  relation  to  the  protection,  registration  or 
enforcement  of  designs  in  respect  of  which  you  feel  there  is  need  for  improvement  or  updating of  the 
Community Design Regulation and/or the Design Directive?* 

All 

Yes 

66% 

No 

34% 

No. of answers* 

68 

*no opinion answers not included; cells with less than 50% shaded  

124 

 
 
 
 
Source: responses to open public consultations on designs 

A majority of respondents (66%) thinks that there is need for improvement or updating of 
the Community Design Regulation and/or the Design Directive. 

Degree of harmonisation 

Q48. Below is a list of design law aspects that are not (fully) harmonised by the Design Directive. For each 
item please let us know how do you assess the need for harmonisation in view of potential obstacles for the 
internal  market  and  the  establishment  of  a  level  playing  field  for  the  registration  of  national  designs.: 
(% of Very important and rather important answers) 

Formal requirements to represent a design (e.g. number of views, neutral background) 

Substantive grounds for refusal of registration 

Product indication and the design’s scope of protection 

Right to the design 

Multiple applications and its conditions 

Right of prior use 

Refusal/invalidity based on earlier distinctive sign (optional in the Directive) 

Refusal/invalidity based on unauthorised use of a copyright protected work (optional in the 
Directive) 

National designs as objects of property (transfer, rights in rem, levy of execution, 
licensing) 

Description of design and its legal relevance for the subject-matter of protection 

Deferment of publication 

Procedure for invalidating a design 

Responsible authority for invalidating a design 

Refusal/invalidity based on improper use of an item listed in Article 6b of the Paris 
Convention for the Protection of Industrial Property (optional in the Directive) 

Protection of unregistered designs 

Procedure for refusal of registration 

Max no. of answers 

All 

93% 

92% 

90% 

89% 

88% 

86% 

81% 

78% 

77% 

77% 

76% 

76% 

74% 

74% 

72% 

69% 

81 

* no opinion answers not included, thus the residual to 100 represents “not important” answers; cells with 
less than 50% shaded 
Source: responses to open public consultations on designs 

The design law aspects that are considered in most need for harmonisation are the formal 
requirements  to  represent  a  design  (e.g.  number  of  views,  neutral  background),  the 
substantive  grounds  for  refusal  of  registration,  the  product  indication  and  the  design’s 
scope of protection, the right to the design, multiple applications and its conditions. Other 
aspects  considered  in  need  of  harmonisation  that  respondents  referred  to  are  the 
introduction  of  opposition  proceedings,  procedural  rules,  remedies  and  costs  in  court 
proceedings; mention of the name of the designer (should be facultative); the notion of 
get up and set of articles; and length of grace periods. 

The respondents presented the following reasons for this further harmonisation: 

125 

 
 
The  harmonisation  of  the  formal  requirements  to  represent  a  design  is  considered 
important  in  order  to  allow  applicants  to  use  the  same  set  of  design  representations  at 
EUIPO and in any Member State (and, as a vision in the future, at any IPO party to the 
Hague system). Moreover, alignment of such formalities will help to define the subject-
matter of protection of a design. While the CP6 common practice312 is  seen as  a major 
step  towards  convergence  of  practices  in  this  field,  further  legislative  harmonisation  is 
needed. 

Some  respondents  believed  national  offices  should  be  responsible  for  invalidating  a 
design, as this would make the enforcement of design rights quicker and less onerous for 
right holders. An alternative would be to put in place an opposition procedure similar to 
that  for  trade  mark  law.  In  addition,  court  proceedings  should  be  available  (e.g.  for 
counterclaims as provided for by Article 84 of the Regulation). 

Product  indications  are  not  supposed  to  determine  the  scope  of  protection,  but  serve 
administrative  purposes  only.  However,  when  courts  use  the  product  indication  in 
assessing who the informed user is, in assessing design freedom, etc., this can lead to an 
effect  on  the  scope  of  protection.  This  is  an  area  where  respondents  believed 
harmonisation  would  be  helpful,  so  applicants  know  where  they  stand  when  listing 
product indications. 

While  deferred  publication  is  possible  for  RCDs,  not  all  Member  States  provide  this 
option.  Also,  deferment  periods  vary  between  Member  States.  Therefore,  for  designers 
and  right  holders  who  wish  to  keep  their  designs  temporarily  confidential,  the 
introduction  of  a  mandatory  deferment  period  in  alignment  with  the  period  of  the 
Regulation would be of great practical importance.  

More in general it is considered that the lack of harmonisation leads to a lack of clarity 
and  potentially  to  inconsistent  protection  and/or  increased  costs  in  relation  to  both 
validity disputes and/or infringement claims. Applicants are not only subjected to higher 
costs  in  securing  protection  due  to  inconsistent  application  procedures,  but  are  also 
granted inconsistent rights across the EU, such that what may amount to infringement in 
one  member  state  will  not  infringe  in  another.  It  also  complicates  the  definition  of 
international  protection  strategies  and  dramatically  increases  protection  costs  at  the 
expense of innovation.  

Specific question to national authorities 

Q49. In some Member States, invalidity proceedings can only be brought before a judicial body. What is 
your view on making such proceedings available before  all national industrial property offices across 
the EU?* 

All  

Positive 

77% 

Negative 

No. of answers* 

23% 

22 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

The  respondents  clearly  favour  the  idea  of  making  invalidity  proceedings  available 
before all national industrial property offices across the EU. The main argument is that 
administrative proceedings are simpler, quicker and cheaper than court proceedings. This 
would  particularly  benefit  SMEs  who  need  quick  access  to  justice  at  reasonable  costs 

312 See Annex VI. 

126 

 
 
                                                           
when  being  threatened  with  design  infringement.  It  is  also  argued  that  invalidity 
proceedings  at  national  IP  Offices  would  foster  legal  certainty,  specialisation  and 
knowledge  optimisation.  Furthermore,  having  mandatory  administrative  invalidity 
proceedings would be in alignment with the current trade marks legislation.  

However,  those  against  introducing  mandatory  administrative  invalidity  proceedings 
point  out  that  in  some  member  states  so  few  designs  are  invalidated  that  there  is  not 
enough  experience  nor  demand  to  run  such  proceedings  efficiently.  They  consider 
judicial  procedure  more  appropriate,  also  due  to  its  complexity  and  connection  with 
copyright law only judicial authorities.   

Specific questions to lawyers/legal advisers, authorities and academia 

Q50. In terms of coherence, are you aware of any problematic inconsistencies or discrepancies in the 
provisions of the Design Directive and/or the Community Design Regulation, and/or between these two 
instruments, and/or between one/both of these two instruments with other Union legislation?* 

All 

Yes 

28% 

No 

72% 

No. of answers* 

65 

*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

Almost  three-quarter  of  the  respondents  considered  that  there  is  no  discrepancies  or 
inconsistencies  within  the  design  acquis  or  between  the  design  acquis  and  other  legal 
instruments in the European Union.  

Identified  discrepancies  mostly  relate  to  the  lack  of  alignment  to  trade  marks  law  as 
regards  goods  in  transit  and  the  unclear  interlink  between  design  protection  and  other 
intellectual property rights. As regards the latter, the relationship between copyright law 
and  designs  law  is  considered  unclear  and  potentially  leading  to  a  smaller  reliance  on 
design  protection.  Several  respondents  considered  it  important  to  insist  on  the 
autonomous  character  of  design  protection  or  at  least  a  stronger  demarcation  between 
copyright and design protection.  

Q51.  The  Community  Design  Regulation  and  the  respective  Implementing  Regulation  (EC)  No 
2245/2002  set  out  rules  for  procedures  before  the  EUIPO  which  is  also  responsible  to  conduct 
procedures  in  European  Union  trade  mark  matters.  Are  you  aware  of  any  procedural  discrepancies 
between these regulations which are not justified by the different nature of designs and trade marks?* 

Yes 

No 

No. of answers* 

All 
*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

21% 

79% 

52 

A  large  majority  of  respondents  consider  that  there  is  no  procedural  discrepancies 
between  the  designs  and  trade  marks  law.  However,  some  respondents  noted  the 
following discrepancies: 

  The lack of any ‘continuation of proceedings’ as regards designs appears problematic. 
Given  the  protection  requirements  (i.e.  novelty  and  individual  character),  missing  a 
deadline can have drastic consequences. 

  Renewal dates are calculated differently for EU trade marks and EU designs.  
  Non-EU based but EEA-based representatives are allowed in trade mark matters but 

not in design matters. 

127 

 
 
 
  EU  trade  marks  files  are  freely  accessible  while  this  is  not  the  case  for  Community 

designs. 

  The possibility  for the holder of a Community design to  raise the defence regarding 
the lack of use in a nullity procedure should be harmonised with trade marks law. 
  A registration fee is due for the transfer of a Community design while such fee is not 

required for trade marks. 

  In trade marks law, notification of the term of protection is requested while this is not 
the case as regards designs law. Such notification appears to be beneficial for designs 
holders.  

  The  procedures  regarding  international  trade  marks  designating  the  EU  and 

international designs designating the EU should be harmonised. 

Q52.  In  your  opinion,  to  what  extent  has  the  accession  of  the  EU  (2006)  to  the  international  Hague 
system,  which  allows  EU  applicants  to  obtain  design  protection  in  countries  which  are  party  to  its 
Geneva Act, proved to be a useful complement to the available venues for obtaining design protection 
both within and outside the EU?* 

Useful 

Useless 

No. of answers* 

All 
*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

93% 

7% 

61 

A  very  large  majority  of  respondents  (93%)  considers  the  accession  of  the  EU  to  the 
international  Hague  system  as  being  very  beneficial.  Respondents  in  favour  of  the 
accession  to  the  international  Hague  system  generally  mention  that  this saves  time  and 
money  and  lighten  the  administrative  burden  (including  the  monitoring  of  national 
registrations)  while  providing  effective  protection.  This  is  also  seen  as  creating  an 
additional option and enlarging therefore users’ choice.  

Some  respondents,  while  still  considering  the  accession  as  useful,  consider  that  some 
improvements  should  be  made.  Another  respondent  noted  the  loss  of  revenues  for 
national offices. Finally, one respondent considered that there was no added value given 
the facility with which one can file for an EU design. 

Q53. In this context, do you consider the accession of Member States to the international Hague system 
to  be  necessary  to  remove  major  obstacles  to  the  internal  market  and  the  establishment  of  a  level 
playing field?* 

Yes 

No 

No. of answers* 

All 
*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

77% 

23% 

43 

Over  three  quarters  of  respondents  are  in  favour  of  the  accession  of  MS  to  the 
international  Hague  system.  Respondents  considered  this  would  save  time  and  money 
and  lighten  the  administrative  burden.  An  additional  argument  appeared  to  be  the 
possibility  for  applicants,  when  Member  States  accede  to  the  Hague  system,  to  better 
tailor  their  IP  strategies  and  further  save  costs  and  time.  Indeed,  under  the  current 
circumstances, it is not always possible to target one MS. This means that sometimes the 
coverage  is  broader  than  needed  (the  whole  EU  instead  of  some  MS)  and  that  this 
prevents  any  level  playing  field  between  MS.  For  these  reasons,  some  respondents 

128 

 
 
 
consider that the Commission should at least encourage, or even require, MS to adhere to 
the Hague system. 

Q54.  Are  you  aware  of  any  problems/issues  which  negatively  influence  the  complementarity  and 
interoperability  between  the  Community  design  system,  the  national  design  systems  and/or  the 
international Hague system?* 

Yes 

No 

No. of answers* 

All 
*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

48% 

52% 

61 

Respondents  are  split  on  this  question,  with  48%  considering  that  problems  negatively 
influence  the  complementarity  and  interoperability  of  the  Community,  national  and 
international designs systems.  

One of the main inconsistencies identified by the respondents concerns the representation 
requirements  (including  the  number  of  representations  and  the  lack  of  harmonised 
approach  on  dotted  and  broken  lines).  Harmonisation  between  the  EUIPO  and  national 
office is considered essential on this point. Other identified inconsistencies concerned the 
difference  between  deferment  periods  and  the  lack  of  harmonisation  of  the  disclosure 
requirement.  Other  issues  concerned  the  lack  of  harmonisation  as  regards  priority 
certificates issued by trade fair organisers, the conditions for a declaration of invalidity, 
the  number  of  designs  allowed  per  application  and  the  protection  of  spare  parts.  The 
impossibility to register licences and pledges relating to international designs designating 
the EU was also mentioned. Finally, one respondent mentioned the lack of harmonisation 
as regards the novelty criterion, which can lead to difficulties when establishing a designs 
strategy. 

Q55. If you wish to register the same design in the EU and in other countries outside the EU, what are the 
main difficulties in achieving it? 

Different scope of protection 

Different requirements for the design representation 

Different requirements for the product indications 

Different procedural rules 

Other 

There are no relevant difficulties 

I have no experience 

cells with less than 50% shaded 
Source: responses to open public consultations on designs 

no. of answers 

All 

2% 

14% 

0% 

14% 

7% 

0% 

63% 

43 

The  main  difficulties  in  achieving  to  register  the  same  design  in  the  EU  and  in  other 
countries outside the EU are the different requirements for the design representation and 
the different procedural rules. 

By  way  of  example,  it  was  mentioned  that  in  some  countries,  such  as  the  United  Arab 
Emirates,  filing  formalities  (notarisation  and  legalisation)  are  very  time-consuming  and 
costly.  In  particular,  the  diverging  requirements  and  procedures  for  claiming  priority 

129 

 
 
 
create  hurdles.  In  some  countries,  even  where  an  application  is  filed  through  the 
international  system,  assistance  of  a  local  agent  is  required  in  order  to  provide  the 
priority certificate. 

It  was  further  stated  that  certain  advantages  of  the  European  system  are  not  always 
available  in  the  rest  of  the  world.  For  instance,  combining  a  number  of  designs  in  one 
multiple application, which is possible at EU level and in most member states, may not 
be  an  option  elsewhere.  The  same  is  true  for  the  grace  period,  which  does  not  exist  in 
certain countries, like China where absolute novelty is required. 

Q56. In your view, is the current general level of fees for Community designs appropriate?* 

Yes 

No, fees are too 
high 

No, fees are too 
low 

No. of answers* 

79% 
All 
*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

18% 

3% 

71 

A majority (79%) thinks that the current general level of fees for Community designs is 
appropriate.  

However,  some  respondents  suggest  commissioning  a  fee  review  study  that  would 
recommend  new  fee  levels  and  structures  subject  to  periodic  review.  The  study  should 
examine what it costs the EUIPO to register a design and whether lowering the basic fee 
of EUR 350 for a registered Community design application (=registration and publication 
fee)  would  have  any  impact  on  the  performance  of  the  national  and  regional  offices. 
National  design  filings  must  remain  attractive  for  applicants.  They  further  are  of  the 
opinion  that  renewal  fees  are  too  high  and  should  not  increase  each  time  a  registered 
design is renewed. 

Q57. In your view, does the current structure of the various fees present any difficulties to applicants 
and holders of Community designs?* 

Yes 

No 

No. of answers* 

All 
*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

22% 

78% 

63 

Most  respondents  (around  80%)  considers  that  the  current  structure  of  fees  does  not 
present  difficulties  to  applicants.  Those  20%  of  respondents  who  believed  it  does 
indicated  that  renewal  fees  are  too  high,  especially  for  SMEs  or  single  designers,  and 
should not increase each time a registered design is renewed. In addition, they considered 
the  renewal  fees  for  multiple  design  applications  out  of  proportion.  Once  a  design  is 
registered,  there  is  no  bulk  discount  available  anymore.  The  renewal  fee  (including 
publication thereof) applies to  each single design contained in the multiple application. 
Furthermore,  the  registration  fee  for  the  change  of  holder  is  considered  unjustified,  in 
particular since it does not exist for EU trade marks. Also, one respondent considered the 
distinction between the filing fee and the publication fee too complex and not sufficiently 
flexible;  this  last  difficulty  could  be  reduced  by  introducing  a  simplified  application 
system such as  that  provided for in  France, with  a deferred payment  of the publication 
fee only for those models which are of commercial interest.  

130 

 
 
 
 
Q58. In this context, do you think it is appropriate that all designs of a multiple application must refer to 
products  in  the  same  class  of  the  International  Classification  for  Industrial  Designs  (Locarno 
Classification) to be able to benefit from the current bulk discount?* 

Yes 

No 

No. of answers* 

All 
*no opinion answers not included; cells with less than 50% shaded  
Source: responses to open public consultations on designs 

44% 

56% 

73 

Respondents were split on the issue, with a slight majority (56%) thinking that it is not 
appropriate that all designs of a multiple application must refer to products in the same 
Locarno class to benefit from the current bulk discount. Reason is that this requirement 
results  in  an  unwanted  and  illogic  multiplication  of  applications.  It  means  that  some 
products  such  as  "hairdryers"  and  "parts  of  hairdryers"  cannot  be  included  in  the  same 
multiple  application  whereas  other  completely  unrelated  products  (e.g.  "chair"  and 
"table")  can.  Some  respondents  considered  that  multiple  designs  belonging  to  different 
classes  (but  belonging  to  related  activities  of  the  same  company)  should  be  able  to  be 
covered by a single application, resulting in a reduction in costs. 

General question to all 

Q59. If you wish to add any further information or views in relation to the design protection systems in 
the EU and their potential for improvement, which have not been covered by this questionnaire,  please 
feel free to do so here:* 

Many  stakeholders  used  this  field  to  come  back  to  issues  they  considered  important  in 
view of the potential future reform. Most of the comments received concerned potential 
introduction of a “repair clause” (included under questions 16 and 17 above) or called for 
broadening  the  list  of  trade  fairs  that  are  recognised  for  the  purpose  of  establishing 
priority (wider recognition of exhibition priority certificates). 

Several respondents called for unifying the terminology between trade mark and design 
legislation.  They  called  in  particular  for  changing  the  term  “Community  design”  to  the 
“EU  design”,  and  replacing  references  to  the  “Office  for  Harmonisation  in  the  Internal 
Market (Trade Marks and Designs)” (“OHIM”) with the current name, i.e. the “European 
Union Intellectual Property Office”. 

Some  respondents  stressed  again  the  importance  of  raising  awareness  on  design 
protection and its benefits, both within the EU and on the national level. 

131 

 
 
ANNEX 5: OVERVIEW OF COSTS – BENEFITS IDENTIFIED IN THE EVALUATION 

I. Overview of costs – benefits identified in the evaluation 

Citizens/Consumers 

Businesses 

Users of products embodying 
designs 

Designers and design owners 

Users of designs of others 

Administrations 

EUIPO, National IP Offices, 
Community design courts and 
other national courts 

Qualitative 

Quantitative / 
monetary 

Qualitative 

Quantitative / 
monetary  

Qualitative 

Quantitative / 
monetary  

Qualitative 

Quantitative / 
monetary 

Pre-
registration 
phase 

[not discussed 
in this 
Evaluation 
Report] 

- Description: 
economic 
- Type: 
 in-house resources 
and/or outsourcing 
costs   
- Expected 

Costs: 
N/A 

- design cost 
embedded in the cost 
of a product 

Costs: 
low / 
medium 

Benefits: 
medium / 
high 

- access to 
innovative products 
embodying designs 

Benefits: 
medium / 
high  

-  costs of legal and 
marketing advice (e.g. 
deciding what to 
protect, how and 
where) 

- choosing optimal 
form of design 
protection (national / 
EU, registered / 
unregistered)  

Costs: 
N / A 

N / A  

Costs: 
medium 

- raising awareness 
about design 
protection and its 
benefits 

Benefits: 
N / A 

N / A  

Benefits: 
medium / 
high 

- better uptake of 
design protection 

Obtaining 
design 
protection 

- Description: 
economic 
- Type: 
regulatory charges, 

Costs: 
N/A 

- design cost 
embedded in the cost 
of a product 

Costs: 
low / 
medium 

- running novelty 
checks to verify the 
state of the art in the 
relevant area 

Costs: 
low / 
medium / 
high 

- costs of legal 
advice (e.g. advice 
on freedom to 
operate/design 

Costs: 
low / 
medium318 
319 

- provide 
information on 
how to register 
designs 

318 While increasing volumes of design applications could lead to increase of operational costs, progressing digitalisation of IP offices and optimization of processes allows to cut costs. 
319 Member States already had IP offices before adoption of the EU legislation on design protection. 

132 

 
 
 
 
 
                                                           
Sec. 5.3. 

administrative costs, 
compliance costs, 
operational costs 
- Expected 

- registration costs 
including time 
investment, fixed 
administrative 
fees313 314 and costs of 
representation315 and 
preparing design 
application (i.e. the 
necessary 
documentation, in 
particular as to design 
representation)316 
- negotiating and 
drafting of licence 
agreements  

- exclusive right to 
use the design, 
competitive 
advantage  
- one stop shop for 

clearance searches) 
- negotiating and 
drafting of licence 
agreements  
- the licence fees’ 
 depend on specific 
designs and industry 
sector317  

- examining  
design 
applications320 
- maintaining the 
design registry, 
including search 
tools and the IT 
systems  
- other operational 
costs  

Benefits: 
medium / 
high  

- good understanding 
of the market of 
competing designs 
allows for making 
better choices and 

Benefits: 
medium / 
high 

- examination of 
applications is a 
core business of 
the EUIPO and 
national IP offices 

Benefits: 
medium / 
high  

- access to 
innovative products 
embodying designs 

Benefits: 
medium / 
high 

313  Registration  fees  for  Registered  Community  designs  are  set  out  in  the  Implementing  Regulation  and  the  Fees  Regulation.  Registration  fees  for  national  design  rights  are  not 
harmonised, and are set independently by each Member State. For more details on fees, both for Registered Community Design rights and national design rights see Section 5.3.6. 
314 E.g. for an RCD an applicant will have to pay a fee of EUR 350 (EUR 230 registration fee + EUR 120 publication fee = EUR 350) for a single Community design application, and 
EUR 1 050  (EUR 230 registration  for the  first design +  4  x EUR 115 registration  for 4 additional designs + EUR 120 publication  for the first design +  4  x EUR 60 publication for 
additional 4 designs = EUR 1 050) for a multiple application consisting of 5 designs 
315 Costs of representation are not fixed, and will vary depending on the applicants’ choice  – see Section 5.3.6. Costs of legal/professional representation are out of scope of the EU 
legislation on design protection. 
316  Member  States  are  free  to  set  the  procedural  provisions  concerning  registration,  renewal  and  invalidation  of  national  design  rights  (Recital  6  of  the  Directive);  the  resulting 
divergence  of  rules  and  practices  is  also  adding  to  relevant  acquisition  costs  (e.g.  same  documentation  might  not  be  usable  across  the  EU  in  the  context  of  multi-jurisdictional 
applications). 
317 Levels of licence fees are not regulated and are set independently by design owners; they vary considerably. Levels of licence fees are out of scope of the EU legislation on design 
protection. 
320 Since both the EUIPO and national IP offices are handling registrations of different types of rights, it is hard to distinguish operational costs solely relating to designs. 

133 

 
 
 
                                                           
obtaining Community 
design right:  
introduction of 
unitary titles made it 
possible to 
considerably decrease 
costs and time taken 
to obtain design 
protection 

Costs: 
N/A 

- design cost 
embedded in the cost 
of a product 

Costs: 
low / 
medium 

Maintaining 
design 
protection 

Sec. 5.3. 

- Description: 
economic 
- Type: 
regulatory charges, 
administrative costs, 
licence fees, 
operational costs 
- Expected 

Costs: 
low / 
medium / 
high 

- costs of monitoring 
duration of the 
term(s) of protection 
(for multiple rights, 
different terms will 
apply) 
- renewal costs 
including time 
investment, fixed 
administrative 
fees322 323 and  costs 
of representation 

- streamlined 
processes - EUIPO 
provides a one 
stop shop for 
obtaining 
Community design 
rights 
- EUIPO and 
national offices 
cooperate to 
converge their 
practices and 
increase 
interoperability of 
systems, where 
possible321 

Costs: 
low  

- processing 
renewal requests 
- examining 
invalidity 
proceedings  

avoiding 
infringements  
- for licences: right 
to use the design, 
competitive 
advantage  
- otherwise:  
access to innovative 
products embodying 
designs 
- introduction of 
unitary titles made it 
possible to 
considerably 
decrease costs and 
time taken to obtain 
a licence covering 
the EU territory 

- the licence fees 
 depend on specific 
designs and industry 
sector 
- launching 
invalidity 
proceedings against 
design right holder, 
if useful 

321 See Annex VI. 
322 Renewal fees for Registered Community designs are set out in the Implementing Regulation and the Fees Regulation. Renewal fees for national designs rights are not harmonised, 
and are set independently by each Member State. For more details on renewal fees, both for Registered Community Design rights and national design rights see Section 5.3.6. 

134 

 
                                                           
Benefits: 
medium / 
high 

- access to 
innovative products 
embodying designs 

Benefits: 
medium / 
high 

- defence in invalidity 
proceedings324, if 
launched against 
registered design 
- watch services325 

- exclusive right to 
use the design, 
competitive 
advantage  
- introduction of 
unitary title made it 
possible to 
considerably decrease 
costs and time taken 
to maintain design 
protection 

Benefits: 
medium / 
high 

Costs: 
N/A 

N/A 

Enforcing 
design rights 

Sec. 5.4. 

- Description 
economic 
- Type 
enforcement costs, 
administrative costs, 
representation costs, 
operational costs 

Costs: 
medium / 
high  

- court fees326 and 
administrative fees, 
covering both 
launching 
invalidity327 and 
infringement 
proceedings  

Costs: 
medium / 
high  

Benefits: 
medium / 
high 

Costs: 
low / 
medium 

- introduction of 
unitary titles made it 
possible to 
considerably 
decrease costs and 
time taken to obtain 
a licence covering 
the EU territory 
- the Regulation also 
provided for cost- 
and time-efficient 
RCD invalidation 
proceedings  

- court fees and 
administrative fees 
- costs of 
representation before 
court/litigation 
advice/gathering 
evidence 

- processing 
renewal requests 
is a core business 
of the EUIPO and 
national IP offices 
- streamlining 
processes - 
EUIPO provides a 
one stop shop for 
maintaining and 
invalidating 
Community 
design rights  

- hearings and 
decision 
taking/drafting 
- examining 
invalidity 
proceedings 
- Community 

323 E.g. for an RCD EUR 90 for the first renewal, EUR 120 for the second, EUR 150 for the third and EUR 180 for the fourth period of renewal. 
324 In CDR invalidity proceedings the losing party must bear the fees and costs incurred by the other party (Article 70(1) of the Regulation). If the design holder is the losing party, it 
must bear the invalidity fee of EUR 350 as well as the representation costs incurred by the applicant in the course of these proceedings fixed at EUR 400. If the applicant is the losing 
party it must bear the design holder’s representation costs, fixed at EUR 400. 
325 Watching services inform design holders whether third parties file or plan to use similar designs, which may be potentially competitive or infringing. 
326 Levels of court fees and administrative fees are not harmonised and vary considerably between Member States. They are out of scope of the EU legislation on design protection. 
327 Due to non-harmonisation of procedural rules and contrary to the situation under the Regulation, an application for a declaration of invalidity of a national registered design may be 
filed only with a court in some Member States (involving usually greater complexity and higher costs); see Section 5.3.4.  

135 

 
 
 
 
 
 
                                                                                                                                                                                                                                                                                                       
- Expected 

Benefits: 

- reducing 
counterfeiting 
activities detrimental 
to citizens and 
consumers 

Benefits: 
high / 
medium 

- costs of 
representation before 
court/litigation 
advice/gathering 
evidence328 

- securing competitive 
advantage and market 
position 
- introduction of 
unitary titles and 
Community design 
courts made it 
possible to streamline 
proceedings and 
decrease litigation 
costs and time 
- the Regulation also 
provided for cost- and 
time-efficient RCD 
invalidation 
proceedings 

Benefits: 
high / 
medium 

Benefits: 
high / 
medium 

- securing 
competitive 
advantage and 
market position 
- introduction of 
unitary titles and 
Community design 
courts made it 
possible to 
streamline 
proceedings and 
decrease litigation 
costs and time 

design courts are 
in practice  often 
divisions of 
existing national 
courts  

- introduction of 
Community design 
courts improved 
court 
specialisation, 
making it possible 
to streamline and 
improve quality 

Impacts on the 
Internal 
Market 

Sec. 3.2. 

- Description 
economic, social 
- Type 
boosting design 
innovation, 
competitiveness and 
employment, 
implementation and 

Qualitative 

Quantitative / monetary 

 Costs: 
Implementation and compliance costs  
- implementation of obligations laid out in the Regulation and the 
Directive required investment in setting up the EUIPO, organising 
Community design courts, hiring personnel, acquiring necessary IT 
tools and infrastructure, etc. 

- design-intensive industries increasingly contribute to the EU’s 
economy: they accounted for 16.2% of EU’s GDP and generated 
14.2% of all jobs (direct employment) in the EU during the period 
2014-2016329, compared with 13.4% of EU’s GDP and 11.9% of all 
jobs in the period 2011-2013330; 
- increased product innovation and investment in production 

328 E.g. market research or online evidence to show the use or disclosure of designs.  
329 “IPR-intensive industries and economic performance in the European Union”, EPO and EUIPO, September 2019. 
330 “IPR-intensive industries and economic performance in the European Union”, EPO and EUIPO, October 2016. 

136 

 
 
 
 
 
 
                                                           
compliance costs 
- Expected 

Benefits: 
High 
- lower cost of engaging in cross-border activities, better functioning of 
the EU internal market  
- increased number of protected designs translating into and more 
product innovation across the EU 

(evidenced by increasing numbers of design registrations – e.g. for 
RCD annual growth rate of 6.5% between 2003 and 2019; see Section 
3.2); 

137 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
ANNEX 6: CONVERGENCE OF PRACTICES 

Member State Intellectual Property Offices (‘MS IPOs’), the European Union Intellectual 
Property Office (‘EUIPO’) and user associations have been actively working together in 
the  framework  of  the  European  Union  Intellectual  Property  Network  (‘EUIPN’)  to 
converge trade mark and design practices over recent years331. This harmonisation aims 
to  establish  and  communicate  clarity,  legal  certainty,  quality  and  usability  in  areas  in 
which  divergence  had  developed  among  the  MS  IPOs  as  a  result  of  differing 
interpretations of the law as transposed into national legislation. 

Convergence of practices aims to develop common principles with a solid foundation in 
settled case-law. Convergence of practices is also based on the assumption that in order 
to  achieve  harmonisation,  no  legislative  change  will  be  required.  Therefore,  if  legal 
constraints  are  identified  in  a  certain  area,  it  is  not  possible  to  develop  common 
principles that can be applied at EU level. Significant efforts were therefore invested in 
identifying areas that are sufficiently harmonised to allow for convergence of practices. 
Further harmonisation of EU legislation on design protection would therefore give scope 
for  more  cooperation  within  the  EUIPN  to  further  converge  on  practices,  for  instance 
concerning the adequate representation of new technology designs. 

The Common Practices that were developed as a result of the Convergence Programme 
have been widely implemented in the EU and have proved to be extremely well received. 
Convergence programmes in the area of design law are outlined below: 

CONVERGENCE PROGRAMMES  

Convergence of practices in the area of designs (SP2011-2015) 

CP6: Convergence on graphic representations of Designs332 
CP6 defined which types of visual disclaimers and views are accepted throughout the 
EUIPN and provided definitions, recommendations and requirements for each of them. 
The  Common  Practice  established  clear  and  harmonised  requirements  to  determine 
when  a  background  is  considered  neutral,  and  provided  an  overview  of  the  Offices’ 
quality standards for design applications received by electronic means and on paper. 
Since publication and implementation in April 2016, CP6 has not only helped increase 
transparency,  legal  certainty  and  predictability  by  giving  guidance  to  users  and 
examiners on how best to graphically reproduce designs, but it has also helped reduce 
the number of objections for deficiencies regarding those representations.  It should be 
noted that certain legal impediments were identified in several areas (visual disclaimers 
and  additional  elements  of  “neutral  background”;  types  of  views  such  as  snapshots, 
exploded  views  and  sectional  views;  the  combination  of  drawings  with  photographs; 
format of views) which affected the extent to which convergence could be achieved. To 
address some of these issues, a number of requirements in the Common Practice were 
replaced with recommendations, and a benchmarking exercise was included to provide 
an overview of the quality standards required by the MS IPOs for applications.  
Implementation: 

331 https://www.tmdn.org/network/converging-practices  
332 https://www.tmdn.org/network/graphical-representations  

138 

 
 
                                                           
CP6 has been implemented by 22 MS IPOs (BX, BG, CY, CZ, DE, DK, EE, ES, FR, 
GR, HR, HU, IE, IT, LT, LV, PL, PT, RO, SI, SK, UK).  
Agreed outcome:  
Common Communication on graphic representation of designs333 
CP7: Harmonisation of Product Indications334 
When applying for design protection an applicant must indicate the type of product for 
which  protection  is  sought  by  indicating  a  product  indication  that  best  describes  the 
product. The product indication is then reviewed by the receiving office and classified 
based  on  the  Locarno  Classification  system  -  the  international  classification  used  for 
the registration of industrial designs. When a product indication does not appear in the 
Locarno  alphabetical  list,  each  office  must  determine  whether  the  stated  product 
indication(s)  is  acceptable  based  on  their  respective  criteria.  The  CP7  project  was 
launched  to  converge  practices  in  this  area,  by  standardising  the  use  of  product 
indications within the EU and beyond.  
CP7 was the first project on the classification of designs. MS IPOs and users worked 
together  to  create  a  harmonised  database,  which  now  contains  approximately  16 000 
product  indications  and  their  accepted  translations  in  all  EU  languages.  The 
harmonised database of product indications provides the input for an intuitive and easy-
to-use  design  classification  tool  –  DesignClass  –  via  which  applicants  can  search  for 
and  select  the  most  suitable  product  indication  for  their  design  and  examiners  can 
verify  the  acceptability  of  terms.  All  the  features  of  the  tool  combine  to  provide  the 
most  extensive,  free,  online  resource  of  pre-accepted  product  indications  and 
translations available to users and MS IPOs. 
By reducing the risk of an objection based on mere formalities, convergence on product 
indications  has  also  reduced  costs  associated  with  the  filing  of  design  applications  in 
different MS IPOs.  
Implementation: 
The tool went live in January 2017 and has been implemented by all MS IPOs (AT, 
BX, BG, CY, CZ, DE, DK, EE, ES, FI, FR, GR, HR, HU, IE, IT, LT, LV, MT, PL, PT, 
RO, SE, SI, SK, UK). 
Agreed outcome:   
DesignClass - common harmonised product indication database335 

Convergence of practices in the area of Designs (SP 2016-2020) 

CP10: Criteria for Assessing Disclosure of Designs on the Internet 
The CP10 project was launched in 2017 with the objective to bring clarity, consistency 
and  harmonisation  on  the  criteria  for  assessing  disclosure  of  designs  on  the  internet. 
The CP10 Common Practice provides criteria for assessing disclosure of designs on the 
internet and recommendations on sources of design disclosure on the internet, types of 
evidence  used  for  proving  disclosure  on  the  internet,  different  means  for  establishing 
the  date  of  disclosure  and,  lastly,  the  exceptions  to  the  availability  of  designs  on  the 
internet. 

333 https://euipo.europa.eu/tunnel-
web/secure/webdav/guest/document_library/contentPdfs/about_euipo/who_we_are/common_communicati
on/common_communication_7/common_communication7_en.pdf  
334 https://www.tmdn.org/network/harmonisation-of-product-indications  
335 https://euipo.europa.eu/designclass/   

139 

 
                                                           
Implementation: 
20 MS IPOs have either already implemented CP10 (BG, CY, DE, GR, HR,  IE,  LV, 
PL, RO) or have committed to implementation in the coming months (CZ, DK, EE, ES, 
FI,  HU,  IT,  LT,  PT,  SE,  SK).  However,  despite  substantial  interest,  some  Offices 
cannot fully apply the Common Practice due to the responsibility for design invalidity 
proceedings lying with external courts.  
Agreed outcome:  
Criteria for Assessing Disclosure of Designs on the Internet336 

Convergence of tools within MS IPOs 

European  Cooperation  initiatives  do  not  focus  only  on  practices  but  also  on  tools. 
Convergence in the field of design tools can be assessed through the significant number 
of MS IPOs which use common Front Office (e.g. e-filing, e-renewal and e-invalidity) 
solutions and Back Office tool.  
Back  Office  tool  is  a  single  software  with  different  functionalities  the  MS  IPOs  may 
use  for  operating  the  full  lifecycle  of  a  design,  allowing  activities  that  range  from 
electronically  receiving  the  application,  processing  it,  confirming  that  payment  is 
received,  proceeding  with  the  required  examination  activities  and  publishing  the 
registered design in the specific local public registry. 
Implementation: 
Currently, 15 MS IPOs use a Front Office for Designs solution (AT, BG, BX, DK, EE, 
ES, FI, IE, LT, LV, MT, PT, RO, SE, SI) with 1 further IPO requesting to implement in 
the  future  (GR:  OBI).  11  MS  IPOs  currently  use  a  Back  Office  for  Designs  solution 
(BX, EE, ES, FI, LT, LV, OBI, RO, SE, PL, UK) and a further 5 are in the process of 
implementation (DK, SE, HU, PT AT). 

336 https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/News/cp10/CP10_en.pdf  

140