COMMISSION STAFF WORKING DOCUMENT EXECUTIVE SUMMARY OF THE 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

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   EUROPEAN COMMISSION  Brussels, 6.11.2020  SWD(2020) 265 final  COMMISSION STAFF WORKING DOCUMENT  EXECUTIVE SUMMARY OF THE EVALUATION  of EU legislation on design protection {SWD(2020) 264 final}  
 
 
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Background 

The EU legislation on design protection aims at promoting a single market and an undistorted 
competition  regime  for  products  embodying  designs.  By  providing  effective  protection  for 
designs,  it  also  aims  to  foster  innovation.  Directive  98/71/EC1  (‘the  Directive’)  harmonises 
key  provisions  of  design  law,  ensuring  that  the  conditions  for  obtaining  registered  design 
rights  are  identical  and  that  those  rights  confer  equivalent  protection  in  all  Member  States. 
Regulation (EC) No 6/20022 (‘the Regulation’) creates an autonomous system for the unitary 
protection  of  designs  at  EU  level,  for  both  unregistered  and  registered  designs,  with  the 
European  Union  Intellectual  Property  Office  (‘EUIPO’)  acting  as  competent  administration 
for the registered design.  

The  purpose  of  this  evaluation  is  to  analyse  to  what  extent  the  EU  legislation  on  design 
protection  has  achieved  its  objectives  in  terms  of  efficiency,  effectiveness,  relevance, 
coherence and EU added value. It aims to assess to what extent the legislation is still fit for 
purpose, in particular in view of the digital transformation underway. 

Findings 

The evaluation showed that the objectives pursued by the EU’s design legislation continue to 
be highly relevant. This was shown in the substantial contribution made by design-intensive 
industries  to  the  EU’s  economy  and  in  the  growing  value  of  new  technological  designs  for 
EU  innovation.  The  steady  increase  in  the  number  of  design  applications  filed  with  the 
EUIPO proves both the success of the Community design system and the rising importance 
companies give to protecting their designs.  

However,  the  evaluation  indicated  that  the  design  protection  system  may  be  underused,  in 
part due to a lack of awareness. It also revealed that the legislation is not fully adapted to the 
digital age (e.g. uncertainties regarding the possibility to protect graphical user interfaces or 
icons as designs, the possibility to file not only static, but also dynamic views of designs, the 
scope of design rights and the scope of private use limitation in the context of 3D printing). 

In  terms  of  effectiveness,  the  EU’s  design  legislation  has  been  broadly  successful  in 
promoting a single market for products embodying designs, with the exception of provisions 
on  design  protection  for  component  parts  used  for  the  repair  of  complex  products.  Due  to 
only  partial  harmonisation,  the  economically  important  spare  parts  market  continues  to  be 
fragmented, causing considerable legal uncertainty and distorting competition.  

The legislation also proved to be effective in providing reliable protection tools, serving the 
needs  of  multiple  design  industries.  Regarding  enforcement,  the  evaluation  revealed  that, 
although  judicial  recourse  is  widely  used,  there  is  room  for  improvement.  This  should  be 
explored  in  the context  of  the  recent  evaluation  of  the  Enforcement  Directive3.  The 
Regulation has also clearly been effective in providing access to simple and affordable design 
protection by making it significantly easier and less costly to obtain a registered design right 
that  is  valid  across  the  whole  EU.  However,  the  evaluation  also  revealed  certain 
shortcomings,  such  as  unclear  definitions  of the coverage  of  protection  and  an  outdated 
procedural regime for design representation. 

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  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 195, 2.6.2004, p. 16). 

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As  regards  efficiency,  the  evaluation  showed  that  the  costs  involved  in  implementing 
the legislation are outweighed by its benefits. The unitary registration system has led to lower 
registration  costs,  less  complexity  and  fewer  delays  in  design  registration,  while  increasing 
transparency  and  predictability.  Nonetheless,  the  evaluation  highlighted  certain  aspects 
of the registration  system  (representation  requirements,  conditions  for  filing  multiple 
applications, fee structure) that appear to create unnecessary administrative burden and costs 
for its users, reducing the system’s efficiency. 

The evaluation also revealed that the procedural rules of the Member States differ from each 
other and from the Regulation. These differences have a negative impact on the coherence of 
design protection systems in the EU and lead to uneven levels of access (in terms of delays, 
complexity, and costs) for applicants.  The recent trade mark reform4  significantly increased 
the level of incoherence with the legislation on design protection, due to further substantive 
and  procedural  harmonisation  in  the  trade  mark  sector  (e.g.  to  cover  counterfeit  goods  in 
transit  or  administrative  invalidity  procedures).  The  interaction  with  copyright  law  is 
considered unclear, as it does not properly account for the latest case law issued by the Court 
of Justice of the European Union. 

Regarding  added  value,  it  is  likely  that  without  EU  legislation  on  design  protection,  big 
differences  between  national  laws  would  have  remained,  with  the  result  that  the  internal 
market for goods embodying designs would remain fragmented and distorted. Both acquiring 
and enforcing design protection across the EU would have involved much higher costs and 
administrative  burdens 
innovation  and  new  product 
development. 

for  companies,  discouraging 

Conclusions 

The  EU  legislation  on  designs  can  be  considered  still  broadly  fit  for  purpose.  This  is 
especially valid for the basic premises and principles underlying the legislation, which have 
stood the test of time. 

However,  the  evaluation  revealed  a  number  of  relevant  shortcomings  that  need  to  be 
addressed  to make  the  legal  framework  fit  to  support  the  twin  digital  and  green  transitions 
underway,  and  to become  substantially  more  accessible  and  efficient  for  industries,  SMEs 
and  individual  designers.  These  shortcomings  include  in  particular  lack  of  clarity  and 
robustness  on the  certain  key elements of design  protection (subject  matter, scope of  rights 
and limitations), outdated or overly complicated procedures, inappropriate fee levels and fee 
structure,  lack  of  coherence  of the procedural  rules  and  incomplete  single  market  for  spare 
parts. 

4 https://ec.europa.eu/growth/industry/policy/intellectual-property/trade-mark-protection_en  

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