Source: EURLEX
Language: en
Format: md

**Council of the**
**European Union**

**Interinstitutional File:**

**2022/0392(COD)**

**Brussels, 13 September 2023**
**(OR. en)**

**12714/23**
**ADD 1**

**PI 133**
**COMPET 840**
**MI 718**
**IND 450**
**IA 213**
**CODEC 1543**

**NOTE**

From: Permanent Representatives Committee (Part 1)

To: Council

No. prev. doc.: 12183/23 ADD 1

No. Cion doc.: 15400/22 + ADD 1-5

Subject: Proposal for a DIRECTIVE OF THE EUROPEAN PARLIAMENT AND OF
THE COUNCIL on the legal protection of designs (recast)

         - General approach

For the meeting of the Council (COMPET) on 25 September 2023, delegations will find in the

Annex the Presidency compromise text on the above-mentioned proposal.

Changes compared to the Commission proposal are marked in **bold underlined** or ~~strikethrough.~~

12714/23 ADD 1 BM/AF/ps 1
# COMPET.1 EN

**ANNEX**

**2022/0392 (COD)**

Proposal for a

**DIRECTIVE OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL**

**on the legal protection of designs (recast)**

(Text with EEA relevance)

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty on the functioning of the European Union, and in particular Article

114(1) thereof,

Having regard to the proposal from the European Commission,

After transmission of the draft legislative act to the national parliaments,

Having regard to the opinion of the European Economic and Social Committee **[1]**,

Acting in accordance with the ordinary legislative procedure,

Whereas:

(1) A number of amendments are to be made to Directive 98/71/EC of the European Parliament

and of the Council **[2]** . In the interests of clarity, that Directive should be recast.

**1** OJ C […], […], p. […].
**2** 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).

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# ANNEX COMPET.1 EN

(2) Directive 98/71/EC has harmonised key provisions of substantive design law of the Member

States which at the time of its adoption were considered as most directly affecting the

functioning of the internal market by impeding the free movement of goods and the freedom

to provide services in the Union.

(3) Design protection in national law of the Member States coexists with protection available at

Union level through European Union designs (‘EU designs’) which are unitary in character

and valid throughout the Union as laid down in Council Regulation (EC) No 6/2002 **[3]** . The

coexistence and balance of design protection systems at national and Union level constitutes

a cornerstone of the Union’s approach to intellectual property protection.

(4) In line with its Better Regulation agenda **[4]** to review Union policies regularly, the

Commission carried out an extensive evaluation of the design protection systems in the

Union, involving a comprehensive economic and legal assessment, supported by a series of

studies.

(5) In its conclusions of ~~11~~ **10** November 2020 on intellectual property policy and the revision

of the industrial design system in the Union **[5]**, the Council called on the Commission to

present proposals for the revision of Regulation (EC) No 6/2002 and Directive 98/71/EC.

The revision was requested due to the need to modernise the industrial design systems and to

make design protection more attractive for individual designers and businesses, especially

small and medium-sized enterprises. In particular, that revision was requested to address and

consider amendments aiming at supporting and strengthening the complementary

relationship between the Union, national and regional design protection systems, and

involve further efforts to reduce areas of divergence within the design protection system in

the Union.

**3** Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ L 3,
5.1.2002, p. 1).
**4** –
Communication from the Commission: Better regulation for better results An EU agenda,
COM(2015) 215 final.
**5** Council conclusions on intellectual property policy and the revision of the industrial designs
system in the Union 2020/C 379 I/01 (OJ C 379I, 10.11.2020, p. 1).

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# ANNEX COMPET.1 EN

(6) Based on the final results of the evaluation, the Commission announced in its

communication of 25 November 2020 ‘Making the most of the EU’s innovative potential.

An intellectual property action plan to support the EU’s recovery and resilience’ **[6]** that it will

revise the Union legislation on design protection, following the successful reform of the

Union trade mark legislation.

(7) In its report of 10 November 2021 on the intellectual property action plan **[7]** the European

Parliament welcomed the Commission’s willingness to modernise the Union legislation on

design protection, called on the Commission to further harmonise the application and

invalidation procedures in the Member States, and suggested to reflect upon aligning

Directive 98/71/EC and Regulation (EC) No 6/2002 with a view to creating greater legal

certainty.

(8) Consultation and evaluation have revealed that, in spite of the previous harmonisation of

national laws, there are still areas where further harmonisation could have a positive impact

on competitiveness and growth.

(9) In order to ensure a well-functioning internal market, and to facilitate, where appropriate,

acquiring, administering and protecting design rights in the Union for the benefit of the

growth and the competitiveness of businesses within the Union, in particular small and

medium-sized enterprises, while taking due account of the interests of consumers, it is

necessary to extend the approximation of laws achieved by Directive 98/71/EC to other

aspects of substantive design law governing designs protected through registration pursuant

to Regulation (EC) No 6/2002.

**6** Communication (COM/2020/760 final) from the Commission to the European Parliament,
the Council, the European Economic and Social Committee and the Committee of the
Regions on Making the most of the EU’s innovative potential. An intellectual property
action plan to support the EU’s recovery and resilience.
**7** Report on an intellectual property action plan to support the EU’s recovery and resilience
(2021/2007(INI)).

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# ANNEX COMPET.1 EN

(10) Furthermore, it is also necessary to approximate procedural rules in order to facilitate

acquiring, administering and protecting design rights in the Union. Therefore, certain

principal procedural rules in the area of design registration in the Member States and in the

EU design system should be aligned. As regards procedures under national law, it is

sufficient to lay down general principles, leaving the Member States free to establish more

specific rules.

(11) This Directive does not exclude the application to designs of ~~national or Union~~ legislation

providing for protection other than that conferred by registration or publication as **a** design,

such as **Union** legislation relating to unregistered design rights, **or national or Union**

**legislation relating to** trade marks, patents and utility models, unfair competition or civil

liability.

(12) It is important to establish the principle of cumulation of protection under specific registered

design protection law and under copyright law, whereby designs protected by design rights

should also be eligible for being protected as copyright works, provided that the

requirements of ~~Union~~ copyright law are met.

(13) The attainment of the objectives of the internal market requires that the conditions for

obtaining a registered design right be identical in all the Member States.

(14) To this end it is necessary to give unitary definitions of the notions of design and product,

which are clear, transparent, and technologically up-to-date considering also the advent of

new designs not being embodied in physical products. Without the list of relevant products

being an exhaustive one, it is appropriate to distinguish products embodied in a physical

object, visualised in a graphic, or that are apparent from the spatial arrangement of items

intended to form ~~, in particular,~~ an interior **or exterior** environment. In this context, it should

be recognised that ~~the~~ **animations, such as the** movement **o** ~~**r**~~ ~~,~~ **the** transition **,** ~~or any other~~

~~sort of animation o~~ f **the** features **of a product,** can contribute to the appearance of designs,

in particular those not embodied in a physical object.

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# ANNEX COMPET.1 EN

(15) Furthermore, there is a need for a unitary definition of the requirements regarding novelty

and individual character with which registered design rights must comply.

(16) In order to facilitate the free movement of goods, it is necessary to ensure in principle that

registered design rights confer upon the right holder equivalent protection in all Member

States.

(17) Protection is conferred by way of registration upon the right holder for those design features

of a product, in whole or in part, which are shown visibly in an application and made

available to the public by way of publication or consultation of the relevant file.

(18) ~~While~~ ~~**A**~~ **part from being shown visibly in an application,** design features do not need to

be visible at any particular time or in any particular situation in order to benefit from design

protection ~~,~~ ~~**.**~~ ~~as~~ ~~**A**~~ **s** an exception to this principle, protection should not be extended to those

component parts which are not visible during normal use of a complex product, or to those

features of such part which are not visible when the part is mounted, or which would not, in

themselves, fulfil the requirements as to novelty and individual character. Therefore, those

features of design of component parts of a complex product which are excluded from

protection for these reasons should not be taken into consideration for the purpose of

assessing whether other features of the design fulfil the requirements for protection.

(19) Although product indications do not affect the scope of protection of the design as such,

alongside the representation of the design they may serve to determine the nature of the

product in which the design is incorporated or to which it is intended to be applied.

Furthermore, product indications improve the searchability of designs in the register of

designs kept by an industrial property office. Therefore, accurate product indications

facilitating search and increasing the transparency and accessibility of a register should be

ensured prior to registration without undue burden on applicants.

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# ANNEX COMPET.1 EN

(20) The assessment as to whether a design has individual character should be based on whether

the overall impression produced on an informed user viewing the design differs from that

produced on him by any other design that forms part of the existing design corpus, taking

into consideration the nature of the product to which the design is applied or in which it is

incorporated, and in particular the industrial sector to which it belongs and the degree of

freedom of the designer in developing the design.

(21) Technological innovation should not be hampered by granting design protection to designs

consisting exclusively of features or the arrangement of features dictated solely by a

technical function. It is understood that this does not entail that a design must have an

aesthetic quality. A registered design right may be declared invalid where no considerations

other than the need for that product to fulfil a technical function, in particular those related

to the visual aspect, have played a role in the choice of the features of appearance.

(22) Likewise, the interoperability of products of different makes should not be hindered by

extending protection to the design of mechanical fittings.

(23) The mechanical fittings of modular products may nevertheless constitute an important

element of the innovative characteristics of modular products and present a major marketing

asset and therefore should be eligible for protection.

(24) A design right should not subsist in a design which is contrary to public policy or to

accepted principles of morality. This Directive does not constitute a harmonisation of

national concepts of public policy or accepted principles of morality.

(25) It is fundamental for the smooth functioning of the internal market to unify the term of

protection afforded by registered design rights.

(26) The provisions of this Directive are without prejudice to the application of the competition

rules under Articles 101 and 102 of the Treaty on the Functioning of the European Union.

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# ANNEX COMPET.1 EN

(27) The substantive grounds for non-registrability and the substantive grounds for the

invalidation of registered design rights in all the Member States should be exhaustively

enumerated.

**(27a)** **In order to prevent the improper use of symbols of particular public interest in a**

**Member State, other than those referred to in Article 6ter of the Paris Convention for**

**the Protection of Industrial Property, Member States should however be free to**

**-**
**provide for specific grounds for non** **registrability. In order to prevent the improper**

**registration and misappropriation of elements belonging to cultural heritage of**

**national interest, including, for example, artefacts, handicrafts, costumes, monuments**

**or a group of buildings, Member States should be free to provide for specific grounds**

**for non-registrability and invalidity.**

(28) In view of the growing deployment of 3D printing technologies in diverse industries, and the

resulting challenges for design right holders to effectively prevent the illegitimate, easy

copying of their protected designs, it is appropriate to provide that the creation,

downloading, copying and making available of any medium or software recording the

design, for the purpose of reproduction of a product that infringes the protected design,

amounts to use of the design being subject to the right holder’s authorisation.

(29) In order to strengthen design protection and combat counterfeiting more effectively, and in

line with international obligations of the Member States under the World Trade Organisation

(WTO) framework, in particular Article V to the General Agreement on Tariffs and Trade

on freedom of transit, and, as regards generic medicines, the Declaration on the TRIPS

Agreement and Public Health, the holder of a registered design right should be entitled to

prevent third parties from bringing products from third countries into the Member State

where the design is registered without being released for free circulation there, where

without authorisation the design is identically incorporated in or applied to these products,

or the design cannot be distinguished in its essential aspects of the appearance from such

products.

12714/23 ADD 1 BM/AF/ps 8
# ANNEX COMPET.1 EN

(30) To this effect, it should be permissible for registered design right holders to prevent the

entry of infringing products and their placement in all customs situations, including, in

particular transit, transhipment, warehousing, free zones, temporary storage, inward

processing or temporary admission, also when such products are not intended to be placed

on the market of the Member State concerned. In performing customs controls, the customs

authorities should make use of the powers and procedures laid down in Regulation (EU) No

608/2013 of the European Parliament and of the Council **[8]**, also at the request of the right

holders. In particular, the customs authorities should carry out the relevant controls on the

basis of risk analysis criteria.

(31) In order to reconcile the need to ensure the effective enforcement of design rights with the

necessity to avoid hampering the free flow of trade in legitimate products, the entitlement of

the design right holder should lapse where, during the subsequent proceedings initiated

before the judicial or other authority competent to take a substantive decision on whether the

registered design right has been infringed, the declarant or the holder of the products is able

to prove that the owner of the registered design right is not entitled to prohibit the placing of

the products on the market in the country of final destination.

**8** 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, p. 15).

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# ANNEX COMPET.1 EN

(32) The exclusive rights conferred by a registered design right should be subject to an

appropriate set of limitations. Apart from private and non-commercial use and acts done for

experimental purposes, such list of permissible uses should include acts of reproduction for

the purpose of making citations or of teaching, referential use in the context of comparative

advertising, and use for the purpose of comment or parody, provided that those acts are

compatible with fair trade practices and do not unduly prejudice the normal exploitation of

the design. Use of a design by third parties for the purpose of artistic expression should be

considered as being fair as long as it is at the same time in accordance with honest practices

in industrial and commercial matters. Furthermore, this Directive should be applied in a way

that ensures full respect of fundamental rights and freedoms, and in particular the freedom of

expression.

(33) The purpose of design protection is to grant exclusive rights to the appearance of a product,

but not a monopoly over the product as such. Protecting designs for which there is no

practical alternative would lead in fact to a product monopoly. Such protection would come

close to an abuse of the design protection regime. If third parties are allowed to produce and

distribute spare parts, competition is maintained. If design protection is extended to spare

parts, such third parties infringe those rights, competition is eliminated and the holder of the

design right is de facto given a product monopoly.

(34) The differences in the laws of the Member States on the use of protected designs for the

purpose of permitting the repair of a complex product so as to restore its original

appearance, where the product incorporating the design or to which the design is applied

constitutes a form-dependent component part of a complex product, directly affect the

establishment and functioning of the internal market. Such differences distort competition

and trade within the internal market and create legal uncertainty.

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# ANNEX COMPET.1 EN

(35) It is therefore necessary for the smooth functioning of the internal market and in order to

ensure fair competition therein to approximate the design protection laws of the Member

States as concerns the use of protected designs for the purpose of repair of a complex

product so as to restore its original appearance through the insertion of a repair clause

similar to that already contained in Regulation (EC) No 6/2002 and applicable to EU designs

at Union level but explicitly applying to form-dependent component parts of complex

products only. As the intended effect of such repair clause is to make design rights

unenforceable where the design of the component part of a complex product is used for the

purpose of the repair of a complex product so as to restore its original appearance, the repair

clause should be placed among the available defences to design right infringement under this

Directive. In addition, in order to ensure that consumers are not mislead but are able to make

an informed decision between competing products that can be used for the repair, it should

also be made explicit in the law that the repair clause cannot be invoked by the manufacturer

or seller of a component part who have failed to duly inform consumers about the

**commercial** origin **, typically the producer,** of the product to be used for the purpose of the

repair of the complex product.

(36) In order to avoid that divergent conditions in the Member States regarding prior use cause

differences in the legal strength of the same design in different Member States, it is

appropriate to ensure that any third person who can establish that before the date of filing of

a design application, or, if a priority is claimed, before the date of priority, it has in good

faith commenced use within a Member State, or has made serious and effective preparations

to that end, of a design included within the scope of protection of a registered design right,

which has not been copied from the latter, should be entitled to a limited exploitation of that

design.

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# ANNEX COMPET.1 EN

(37) In order to improve and facilitate access to design protection and to increase legal certainty

and predictability, the procedure for the registration of designs in the Member States should

be efficient and transparent and should follow rules similar to those applicable to EU

designs.

(38) To this effect, it is necessary to provide **essential** common rules regarding the requirements

and technical means for the ~~clear and precise r~~ epresentation of designs in any form of visual

reproduction at filing stage, taking into account technical advance for the visualisation of

designs and the needs of the Union industry in relation to new (digital) designs. In addition,

Member States should establish harmonised standards by means of convergence of

practices.

(39) For greater efficiency it is also appropriate to allow design applicants to combine several

designs in one multiple application and to do that without being subject to the condition that

the products in which the designs are intended to be incorporated or to which they are

intended to be applied all belong to the same class of the International Classification for

Industrial Designs.

(40) The normal publication following registration of a design could in some cases destroy or

jeopardise the success of a commercial operation involving the design. The facility of a

deferment of publication affords a solution in such cases. For the sake of coherence and

greater legal certainty, thereby helping businesses reduce costs in managing design

portfolios, deferment of publication should be subject to the same rules in the Union.

(41) In order to ensure a level playing field for businesses, and provide the same level of access

to design protection across the Union by keeping to a minimum the registration and other

procedural burdens to applicants, all central industrial property offices of the Member States

**and the Benelux Office for Intellectual Property** should limit, as the European Union

Intellectual Property Office (EUIPO) does at Union level, their substantive examination ex

officio to the absence of the grounds for non-registrability exhaustively enumerated in this

Directive.

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# ANNEX COMPET.1 EN

(42) For the purpose of offerin ~~g efficient~~ **another** means of declaring design rights invalid,

Member States should **be allowed to** provide for an administrative procedure for declaration

of invalidity which is aligned to the extent appropriate to that applicable to registered EU

designs at Union level.

(43) It is desirable that Member States' central industrial property offices and the Benelux Office

for Intellectual Property cooperate with each other and with the EUIPO in all fields of

design registration and administration in order to promote convergence of practices and

tools, such as the creation and updating of common or connected databases and portals for

consultation and search purposes. The Member States should further ensure that their central

industrial property offices and the Benelux Office for Intellectual Property cooperate with

each other and with the EUIPO in all other areas of their activities which are relevant for the

protection of designs in the Union.

(44) Since the objectives of this Directive, namely to foster and create a well-functioning internal

market and to facilitate the registration, administration and protection of design rights in the

Union to the benefit of growth and competitiveness where appropriate, cannot be

sufficiently achieved by the Member States but can rather, by reason of its scale and effects,

be better achieved at Union level, the Union may adopt measures, in accordance with the

principle of subsidiarity as set out in Article 5 of the Treaty on European Union. In

accordance with the principle of proportionality as set out in that Article, this Directive does

not go beyond what is necessary in order to achieve those objectives.

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# ANNEX COMPET.1 EN

(45) The European Data Protection Supervisor was consulted in accordance with Article 42(1) of

Regulation (EU) 2018/1725 of the European Parliament and of the Council **[9]** and delivered an

opinion on ….

(46) The obligation to transpose this Directive into national law should be confined to those

provisions which represent a substantive amendment as compared with Directive 98/71/EC.

The obligation to transpose the provisions which are unchanged arises under that earlier

Directive.

(47) This Directive should be without prejudice to the obligations of the Member States relating

to the time-limit for the transposition into national law of the Directive set out in Annex I,

HAVE ADOPTED THIS DIRECTIVE:

**9** Regulation (EU) 2018/1725 of the European Parliament and of the Council of 23 October
2018 on the protection of natural persons with regard to the processing of personal data by
the Union institutions, bodies, offices and agencies and on the free movement of such data,
and repealing Regulation (EC) No 45/2001 and Decision No 1247/2002/EC (OJ L 295,
21.11.2018, p. 39).

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# ANNEX COMPET.1 EN

**CHAPTER 1**

**GENERAL PROVISIONS**

_Article 1_

_**Scope**_

1. This Directive applies to:

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

States;

(b) design rights registered at the Benelux Office for Intellectual Property;

(c) design rights registered under international arrangements which have effect in a

Member State;

(d) applications for the design rights referred to under points (a), (b) and (c).

2. For the purpose of this Directive, design registration shall also comprise the publication

following filing of the design with the industrial property office of a Member State in

which such publication has the effect of bringing a design right into existence.

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# ANNEX COMPET.1 EN

_Article 2_

_**Definitions**_

For the purposes of this Directive, the following definitions apply:

(1) ‘office’ means the central industrial property office **of the Member State or the**

**Benelux Office for Intellectual Property,** entrusted with the registration of designs

~~by one or more Member States~~ ;

(2) ‘register’ means the register of designs kept by an office;

(3) ‘design’ means the appearance of the whole or a part of a product resulting from the

features, in particular, the lines, contours, colours, shape, texture, materials of the

product itself and/or its decoration, including the movement, transition or any other

sort of animation of those features;

(4) ‘product’ means any industrial or handicraft item other than computer programs,

regardless of whether it is embodied in a physical object or materialises in a ~~digital~~

**non-physical** form, including:

(a) packaging, sets of articles, ~~get-up, s~~ patial arrangement of items intended to

form ~~, in particular,~~ an interior **or exterior** environment, and parts intended to

be assembled into a complex product;

(b) graphic works or symbols, logos, surface patterns, typographic typefaces, and

graphical user interfaces ;

(5) ‘complex product’ means a product that is composed of multiple components which

can be replaced permitting disassembly and reassembly of the product.

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# ANNEX COMPET.1 EN

**CHAPTER 2**

**SUBSTANTIVE LAW ON DESIGNS**

_Article 3_

_**Protection requirements**_

1. Member States shall protect designs solely through the registration of the designs ~~,~~ and shall

confer exclusive rights upon their holders in accordance with the provisions of this

Directive.

2. A design shall be protected by a design right if it is new and has individual character.

3. A design applied to or incorporated in a product which constitutes a component part of a

complex product shall only be considered to be new and to have individual character:

(a) if the component part, once it has been incorporated into the complex product,

remains visible during normal use of the latter; and

(b) to the extent that those visible features of the component part fulfil in themselves the

requirements as to novelty and individual character.

4. ‘Normal use’ within the meaning of paragraph (3), point (a), shall mean use by the end

user, excluding maintenance, servicing or repair work.

_Article 4_

_**Novelty**_

A design shall be considered new if no identical design has been made available to the public before

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

Designs shall be deemed to be identical if their features differ only in immaterial details.

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# ANNEX COMPET.1 EN

_Article 5_

_**Individual character**_

1. A design shall be considered to have individual character if the overall impression it

produces on the informed user differs from the overall impression produced on such a user

by any design which has been made available to the public before the date of filing of the

application for registration or, if priority is claimed, the date of priority.

2. In assessing individual character, the degree of freedom of the designer in developing the

design shall be taken into consideration.

_Article 6_

_**Disclosure**_

1. For the purpose of applying Articles 4 and 5, a design shall be deemed to have been made

available to the public if it has been published following registration or otherwise, or

exhibited, used in trade or otherwise disclosed, except where these events could not

reasonably have become known in the normal course of business to the circles specialised

in the sector concerned, operating within the Union, before the date of filing of the

application for registration or, if priority is claimed, the date of priority. The design shall

not, however, be deemed to have been made available to the public for the sole reason that

it has been disclosed to a third person under explicit or implicit conditions of

confidentiality.

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# ANNEX COMPET.1 EN

2. A disclosure shall not be taken into consideration for the purpose of applying Articles 4

and 5 if the disclosed design, which is identical or does not differ in its overall impression

from the design for which protection is claimed under a registered design right of a

Member State, has been made available to the public:

(a) by the designer, his successor in title, or a third person as a result of information

provided or action taken by the designer, or his successor in title; and

(b) during the 12-month period preceding the date of filing of the application or, if

priority is claimed, the date of priority.

3. Paragraph 2 shall also apply if the design has been made available to the public as a

consequence of an abuse in relation to the designer or his successor in title.

_Article 7_

_**Designs dictated by their technical function and designs of interconnections**_

1. A design right shall not subsist in features of appearance of a product which are solely

dictated by its technical function.

2. A design right shall not subsist in features of appearance of a product which must

necessarily be reproduced in their exact form and dimensions in order to permit the product

in which the design is incorporated or to which it is applied to be mechanically connected

to or placed in, around or against another product so that either product may perform its

function.

3. Notwithstanding paragraph 2, a design right shall, under the conditions set out in Articles 4

and 5, subsist in a design serving the purpose of allowing multiple assembly or connection

of mutually interchangeable products within a modular system.

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# ANNEX COMPET.1 EN

_Article 8_

_**Designs contrary to public policy or morality**_

A design right shall not subsist in a design which is contrary to public policy or to accepted

principles of morality.

_Article 9_

_**Scope of protection**_

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

does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing

his design shall be taken into consideration.

_Article 10_

_**Commencement and term of protection**_

1. Protection **of** ~~by a~~ ~~registered~~ design right ~~of a design which meets the requirements of~~

~~Article 3(2)~~ shall arise with registration by the office.

2. A ~~registered d~~ esign shall be registered for a period of five years calculated from the date of

filing of the application for registration. The right holder may ~~have the term of protection~~

renew ~~ed~~ **the registration, in accordance with Article 32,** for one or more periods of 5

years each, up to a total term of 25 years from the date of filing of the application for

registration.

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# ANNEX COMPET.1 EN

_Article 11_

_**Right to the registered design**_

1. The right to the registered design shall vest in the designer or his successor in title.

2. If two or more persons have jointly developed the design, the right to the registered design

shall vest in them jointly.

3. However, **the right to the registered design shall vest in the employer** where a design is

developed by an employee in the execution of his duties or following the instructions given

by his employer, ~~the right to the registered design shall vest in the employer,~~ unless

otherwise agreed **between the parties concerned** or laid down in national law.

_Article 12_

_**Presumption in favour of the registered holder of the design**_

The person in whose name the design right is registered, or prior to registration the person in whose

name the application is filed, shall be deemed to be the person entitled to act in any proceedings

before the office in the territory of which protection is claimed as well as in any other proceedings.

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# ANNEX COMPET.1 EN

_Article 13_

_**Grounds for non-registrability**_

1. A design shall be refused registration where:

(a) the design is not a design within the meaning of Article 2, point (3);

(b) the design does not fulfil the requirements of Article 8 ~~.~~ ~~**;**~~

**(ba)** _(moved from Article 14(1)(g))_ **the design constitutes an improper use of any of the**

**items listed in Article 6ter of the Paris Convention for the Protection of**

**Industrial Property, unless the consent of the competent authorities to the**

**registration has been given.**

**1a.** **Any Member State may provide that a design shall be refused registration where the**

**design constitutes an improper use of badges, emblems and escutcheons other than**

**those covered by Article 6ter of the Paris Convention and which are of a particular**

**public interest in the Member State concerned, unless the consent of the competent**

**authority to their registration has been given in conformity with the law of the**

**Member State.**

**1b.** **Any Member State may provide that a design shall be refused registration where it**

**contains a total or partial reproduction of elements belonging to cultural heritage that**

**are of national interest.**

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# ANNEX COMPET.1 EN

_Article 14_

_**Grounds for invalidity**_

1. If the design has been registered, the design right shall be declared invalid in the following

situations:

(a) the design is not a design within the meaning of Article 2, point (3);

(b) the design does not fulfil the requirements laid down in Articles 3 to 8;

**(ba)** **the design has been registered in breach of Article 13(1)(ba) or of Article 13(1a);**

(c) ~~by virtue of a decision of the competent court or authority, t~~ he holder of the design

right is not entitled to it under the law of the Member State concerned;

(d) the design is in conflict with a prior design which has been made available to the

public **prior t** ~~**o**~~ ~~, and which is protected from a date prior to~~ **or after** the date of filing

of the application ~~,~~ or **,** if priority is claimed, the date of priority of the design **, and**

**which is protected from a date prior to the said date** :

(i) by a registered EU design or an application for a registered EU design subject

to its registration;

(ii) by a registered design right of the Member State concerned, or by an

application for such a right subject to its registration;

(iii) by a design right registered under international arrangements which have effect

in the Member State concerned, or by an application for such a right subject to

its registration;

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# ANNEX COMPET.1 EN

(e) a distinctive sign is used in a subsequent design, and Union law or the law of the

Member State concerned governing that sign confers on the right holder of the sign

the right to prohibit such use;

(f) the design constitutes an unauthorised use of a work protected under the copyright

law of the Member State concerned ~~;~~ **.**

(g) _deleted_ _(moved to Article 13_ _**(1)**_ _(ba))_

**1a.** **If the design has been registered, any Member State may provide that the design**

**right shall be declared invalid, where it contains a total or partial reproduction of**

**elements belonging to cultural heritage that are of national interest.**

2. The grounds for invalidity provided for in paragraph (1), points (a) and (b), may be

invoked by the following:

(a) any natural or legal person;

(b) any group or body set up for the purpose of representing the interests of

manufacturers, producers, suppliers of services, traders or consumers, if that group or

body, has the capacity to sue and be sued in its own name under the terms of the law

governing it.

**2a.** ( _moved from paragraph 5_ ) **The ground for invalidity provided for in paragraph 1,**

**point (ba), may be invoked solely by the person or entity concerned by the improper**

**use.**

3. The ground for invalidity provided for in paragraph 1, point (c), may be invoked solely by

the person who is entitled to the design right under the law of the Member State concerned.

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# ANNEX COMPET.1 EN

4. The grounds for invalidity provided for in paragraph 1, points (d), (e) and (f), may be

invoked solely by the following:

(a) the applicant for or the holder of the ~~conflicting~~ ~~**e**~~ **arlier** right;

(b) the persons who are entitled under Union legislation or the law of the Member State

concerned to exercise the rights in question;

(c) a licensee authorised by the proprietor of ~~a trade mark or a holder of a design right~~

**the earlier right** .

5. _deleted (moved to paragraph 2a)_

6. A design right may not be declared invalid where the applicant for or a holder of a right

referred to in paragraph 1, points (d) to ( **f** ~~g)~~, consents expressly to the registration of the

design before submission of the application for a declaration of invalidity or the

counterclaim.

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

_Article 15_

_**Object of protection**_

Protection shall be conferred for those features of appearance of a registered design which are

shown visibly in the application for registration.

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# ANNEX COMPET.1 EN

_Article 16_

_**Rights conferred by the design right**_

1. The registration of a design shall confer on its holder the exclusive right to use it and to

prevent any third party not having the consent of the holder from using it.

2. The followin ~~g,~~ in particular, may be prohibited under paragraph 1:

(a) making, offering, putting on the market or using of a product in which the design is

incorporated or to which it is applied;

(b) importing or exporting a product referred to in point (a);

(c) stocking a product referred to in point (a) for the purposes mentioned in points (a)

and (b);

(d) creating, downloading, copying and sharing or distributing to others any medium or

software recording the design for the purpose of enabling a product referred to in

point (a) to be made.

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3. ~~By way of derogation from Article 9(1), the~~ **The** holder of a registered design right shall be

entitled to prevent all third parties from bringing products, in the course of trade, from

third countries into the Member State where the design is registered, that are not released

for free circulation in that Member State, where the design is identically incorporated in or

applied to those products, or the design cannot be distinguished in its essential aspects

from such products, and an authorisation has not been given.

The right referred to in the first subparagraph shall lapse, if, during the proceedings to

determine whether the registered design right has been infringed, initiated in accordance

with Regulation (EU) No 608/2013, evidence is provided by the declarant or the holder of

the products that the holder of the registered design right is not entitled to prohibit the

placing of the products on the market in the country of final destination.

_Article 17_

_**Presumption of validity**_

1. In infringement proceedings it shall be presumed, in the favour of the holder of the

registered design right, that the requirements set for the legal validity of a registered design

right referred to in Articles 3 to 8 are met **, and that the design right has not been**

**registered in breach of Article 13(1)(ba)** .

2. The presumption of validity referred to in paragraph 1 shall be rebuttable by any

procedural means available in the jurisdiction of the Member State concerned, including

counterclaims.

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# ANNEX COMPET.1 EN

_Article 18_

_**Limitation of the rights conferred by the design right**_

1. The rights conferred by a design right upon registration shall not be exercised in respect of:

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

(b) acts carried out for experimental purposes;

(c) acts of reproduction for the purposes of making citations or of teaching;

(d) acts carried out for the purpose of identifying or referring to a product as that of the

design right holder;

(e) acts carried out for the purposes of comment, critique, or parody;

(f) the equipment on ships and aircraft registered in another country when these

temporarily enter the territory of the Member State concerned;

(g) the importation in the Member State concerned of spare parts and accessories for the

purpose of repairing such craft;

(h) the execution of repairs on such craft.

2. Paragraph 1, points (c), (d) and (e) shall only apply where the acts are compatible with fair

trade practices and do not unduly prejudice the normal exploitation of the design, and in

the case of point (c), where mention is made of the source of the product in which the

design is incorporated or to which the design is applied.

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# ANNEX COMPET.1 EN

_Article 19_

_**Repair clause**_

1. Protection shall not be conferred on a registered design which constitutes a component part

of a complex product, upon whose appearance the design of the component part is

dependent, and which is used within the meaning of Article 16(1) for the sole purpose of

the repair of that complex product so as to restore its original appearance.

2. Paragraph 1 cannot be invoked by the manufacturer or the seller of a component part of a

complex product who failed to duly inform consumers, through a clear and visible

indication on the product or in another appropriate form, about the **commercial** origin of

the product to be used for the purpose of the repair of the complex product, so that they can

make an informed choice between competing products that can be used for the repair.

3. Where at the time of ~~adoption~~ ~~**e**~~ **ntry into force** of this Directive the national law of a

Member State provides protection for designs within the meaning of paragraph 1, the

Member State shall, by way of derogation from paragraph 1, continue until …[ _OP please_

_insert the date = ten years from the date of entry into force of this Directive_ ] to provide

that protection for designs for which registration has been applied before the entry into

force of this Directive.

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# ANNEX COMPET.1 EN

_Article 20_

_**Exhaustion of rights**_

The rights conferred by a design right upon registration shall not extend to acts relating to a product

in which a design included within the scope of protection of the design right is incorporated or to

which it is applied, when the product has been put on the market in the Union by the holder of the

design right or with his consent.

_Article 21_

_**Rights of prior use in respect of a registered design right**_

1. A right of prior use shall exist for any third party who can establish that before the date of

filing of the application, or, if a priority is claimed, before the date of priority, the third

party has in good faith commenced use within the Member State concerned, or has made

serious and effective preparations to that end, of a design included within the scope of

protection of a registered design right, which has not been copied from the latter.

2. The right of prior use shall entitle the third person to exploit the design for the purposes for

which its use has been effected, or for which serious and effective preparations had been

made, before the filing or priority date of the registered design right.

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# ANNEX COMPET.1 EN

_Article 22_

_**Relationship to other forms of protection**_

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

~~law of the Member State concerned~~ relating to unregistered design rights, **or to any provisions of**

**Union law or the law of the Member State concerned relating to** trade marks or other distinctive

signs, patents and utility models, typefaces, civil liability or unfair competition.

_Article 23_

_**Relationship to copyright**_

A design protected by a design right registered in or in respect of a Member State in accordance

with this Directive shall also be eligible for protection by copyright as from the date on which the

design was created or fixed in any form provided that the requirements of ~~Union~~ copyright law are

met.

_Article 24_

_**Registration symbol**_

The holder of a registered design right may inform the public that the design is registered by

displaying on the product in which the design is incorporated or to which it is applied the letter D

enclosed within a circle. Such design notice may be accompanied by the registration number of the

design or hyperlinked to the entry of the design in the register.

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# ANNEX COMPET.1 EN

**CHAPTER 3**

**PROCEDURES**

_Article 25_

_**Application requirements**_

1. An application for ~~a registered~~ ~~**r**~~ **egistration of a** design shall contain at least all of the

following:

(a) a request for registration;

(b) information identifying the applicant;

(c) a **sufficiently clear** representation of the design suitable for reproduction, permitting

all the details of the subject matter for which protection is sought to be clearly

distinguished and permitting publication **permitting the subject matter for which**

**protection is sought to be determined** ;

(d) an indication of the products in which the design is intended to be incorporated or to

which it is intended to be applied.

2. The application for design registration shall be subject to the payment of a fee determined

by the Member State concerned.

3. The indication of the products as referred to in paragraph 1, point (d), shall not affect the

scope of protection of the design. That shall also apply to a description **, and to any verbal**

**disclaimers included therein,** explaining the representation of the design if such a

description is provided for by a Member State.

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# ANNEX COMPET.1 EN

_Article 26_

_**Representation of the design**_

1. _deleted_

2. ~~It shall consist~~ ~~**T**~~ **he design shall be represented** in any form of visual reproduction **,** ~~of the~~

~~design e~~ ither in black and white or in colour. The reproduction can be static, dynamic or

animated and shall be effected by any appropriate means, using generally available

technology, including drawings, photographs, videos, or computer imaging/modelling.

3. The reproduction shall show all the aspects of the design for which protection is sought in

one or more views. In addition, other types of views may be provided with the purpose of

further detailing specific features of the design **.** ~~, and in particular:~~

(a) _deleted_

(b) _deleted_

(c) _deleted_

(d) _deleted_

4. Where the representation contains different reproductions of the design or includes more

than one view, those shall be consistent with each other and the subject matter of the

registration shall be determined by all the visual features of those views or reproductions in

conjunction.

5. The design shall be represented alone, to the exclusion of any other matter. ~~No explanatory~~

~~text, wording or symbols may be displayed thereon.~~

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# ANNEX COMPET.1 EN

6. Matter for which no protection is sought shall be indicated by way of visual disclaimers **.** ~~,~~

~~preferably in the form of dotted or broken lines. If this is not possible for technical reasons~~

~~or because of the type of design concerned, other visual disclaimers may be used, such as~~

~~shading, boundaries or blurring.~~ Any such visual disclaimers shall be used consistently.

7. _deleted_

8. The Member States' central industrial property offices and the Benelux Office for

Intellectual Property shall cooperate with each other and with the European Union

Intellectual Property Office to establish common standards to be applied to the

requirements and means of design representation, in particular as regards the types and

number of views to be used, the types of acceptable visual disclaimers, as well as the

technical specifications of the means used for the reproduction, storage and filing of

designs, such as the formats and size of the relevant electronic files.

_Article 27_

_**Multiple applications**_

Several designs may be combined in one multiple application for registered designs. This possibility

shall not be subject to the condition that the products in which the design are intended to be

incorporated or to which they are intended to be applied all belong to the same class of the

International Classification for Industrial Designs.

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# ANNEX COMPET.1 EN

_Article 28_

_**Date of filing**_

1. The date of filing of a design application shall be the date on which the documents

containing the information specified in Article 25(1), points (a) to (c), are filed with the

office by the applicant.

**1a.** **Without prejudice to paragraph 1, the filing date may be accorded where one or**

**more of the elements required by Article 26 are missing, provided that the**

**representation of the design as a whole is sufficiently clear within the meaning of**

**Article 25(1), point (c).**

2. Member States may, in addition, provide that the accordance of the date of filing is to be

subject to the payment of a fee as referred to in Article 25(2).

_Article 29_

_**Scope of substantive examination**_

The offices shall limit their examination of whether a design application is eligible for registration

to the absence of the substantive grounds for non-registrability referred to in Article 13.

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_Article 30_

_**Deferment of publication**_

1. The applicant for a registered design may request, when filing the application, that the

publication of the registered design be deferred for a period of **up to** 30 months from the

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

2. When registered the design neither the representation of the design nor any file relating to

the application shall be open to public inspection subject to provisions of national law

safeguarding legitimate interests of third parties.

3. A mention of the deferment of the publication of the registered design shall be published.

4. At the expiry of the period of deferment, or at any earlier date on request by the right

holder, the office shall open to public inspection all the entries in its register and the file

relating to the application and shall publish the registered design.

**4a.** **The right holder may prevent the publication of the registered design as referred to in**

**paragraph 4, by submitting a request for surrender of the registered design.**

**4b.** **Member States may provide, by way of derogation from paragraphs 4 and 4a, that**

**the office shall publish the registered design only on request of the right holder.**

**Where a Member State provides for the payment of a publication fee, the receipt of**

**payment of that fee may be deemed to constitute the request referred to in the first**

**sentence of this paragraph.**

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_Article 31_

_**Procedure for declaration of invalidity**_

1. Without prejudice to the right of the parties to appeal to the courts, Member States ~~shall~~

**may** provide for an efficient and expeditious administrative procedure before their offices

for the declaration of invalidity of a registered design right.

2. The administrative procedure for invalidity **referred to in paragraph 1** shall provide that

the design right is to be declared invalid at least on the following grounds:

(a) the design should not have been registered because it does not comply with the

definition laid down in Article 2, point (3), or with the requirements provided for in

Articles 3 to 8;

**(aa)** **the design should not have been registered because it is in breach of Article**

**13(1)(ba);**

(b) the design should not have been registered because of the existence of a prior design

within the meaning of Article 14(1), point (d).

3. The administrative procedure shall provide that ~~at least t~~ he following persons are to be

entitled to file an application for a declaration of invalidity:

(a) in the case of paragraph 2, point (a), the persons, groups or bodies referred to in

Article 14(2);

**(aa)** **in the case of paragraph 2, point (aa), the person or entity referred to in Article**

**14(2a);**

(b) in the case of paragraph 2, point (b), **at least** the person **s** referred to in Article

14 ~~(3~~ ~~**4**~~ ) **(a) and (b)** .

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_Article 32_

_**Renewal**_

1. Registration of a design shall be renewed at the request of the holder of the design right or

any person authorised to do so by law or by contract, provided that the renewal fees have

been paid. Member States may provide that receipt of payment of the renewal fees is to be

deemed to constitute such a request.

2. The office ~~shall~~ ~~**m**~~ **ay** inform the holder of the registered design right of the expiry of the

registration at least six months before the said expiry. ~~The office shall not be held liable if~~

~~it fails to give such information and such failure shall not affect the expiry of the~~

~~registration.~~

3. The request for renewal shall be submitted and the renewal fees shall be paid at least

**within a period of** six months ~~before~~ **immediately preceding** the expiry of the

registration. Failing that, the request may be submitted within a further period of six

months immediately following the expiry of the registration or of the subsequent renewal

thereof. The renewal fees and an additional fee shall be paid within that further period.

4. In the case of a multiple registration, where the renewal fees paid are insufficient to cover

all the designs for which renewal is requested, registration shall be renewed ~~if~~ **for those**

**designs in respect of which** it is clea ~~r which designs~~ the amount paid is intended to cover.

5. Renewal shall take effect from the day following the date on which the existing registration

expires. The renewal shall be recorded in the register.

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_Article 33_

_**Communication with the office**_

Parties to the proceedings or, where appropriate, their representatives, shall designate an official

address for all official communication with the office. Member States shall have the right to require

that such an official address be situated in the European Economic Area.

**CHAPTER 4**

**ADMINISTRATIVE COOPERATION**

_Article 34_

_**Cooperation in the area of design registration, administration and invalidity**_

The offices shall be free to cooperate effectively with each other and with the European Union

Intellectual Property Office in order to promote convergence of practices and tools in relation to the

examination, registration and invalidation of designs.

_Article 35_

_**Cooperation in other areas**_

The offices shall be free to cooperate effectively with each other and with the European Union

Intellectual Property Office in all areas of their activities other than those referred to in Article 34

which are of relevance for the protection of designs in the Union.

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# ANNEX COMPET.1 EN

**CHAPTER 5**

**FINAL PROVISIONS**

_Article 36_

_**Transposition**_

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

necessary to comply with Articles 2 and 3, Articles 6, 10 to 19, 21, 23 to **30 and 32 to** 33

by …[ _OP please insert the date =_ ~~_24_~~ ~~_**3**_~~ _**6**_ _months after the date of entry into force of this_

_Directive_ ] at the latest. They shall forthwith communicate the text of those measures to the

Commission.

When Member States adopt those measures, they shall contain a reference to this Directive

or be accompanied by such a reference on the occasion of their official publication. They

shall also include a statement that references in existing laws, regulations and

administrative provisions to the Directive repealed by this Directive shall be construed as

references to this Directive. Member States shall determine how such reference is to be

made and how that statement is to be formulated.

2. Member States shall communicate to the Commission the text of the main provisions of

national law which they adopt in the field covered by this Directive.

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_Article 37_

_**Repeal**_

Directive 98/71/EC is repealed with effect from … [ _OP please insert the date = the day after the_

_date in the first subparagraph of Article 36(1)_ ], without prejudice to the obligations of the Member

States relating to the time-limit for the transposition into national law of the Directive set out in

Annex I.

References to the repealed Directive shall be construed as references to this Directive and shall be

read in accordance with the correlation table in Annex II.

_Article 38_

_**Entry into force**_

This Directive shall enter into force on the twentieth day following that of its publication in the

_Official Journal of the European Union_ .

Articles 4 and 5, Articles 7 to 9, Articles 20 and 22 shall apply from …[ _OP please insert the date =_

_the day after the date in the first subparagraph of Article [38](1)_ ].

_Article 39_

_**Addressees**_

This Directive is addressed to the Member States.

Done at Brussels,

_For the European Parliament_ _For the Council_

_The President_ _The President_

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# ANNEX COMPET.1 EN

**ANNEX I**

**Time-limit for transposition into national law**

**(referred to in Article 37)**

|Directive|Time-limit for transposition|
|---|---|
|98/71/EC|28 October 2001|

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# ANNEX I COMPET.1 EN

**ANNEX II**

**CORRELATION TABLE**

|Directive 98/71/EC|This Directive|
|---|---|
|Article 1, introductory wording<br>- <br>Article 1, point (a)<br>Article 1, point (b)<br>Article 1, point (c)<br>Article 2<br>Articles 3 to 10<br>- <br>Article 11<br>- <br>Article 12(1)<br>- <br>- <br>Article 12(2)<br>-|Article 2, introductory wording<br>Article 2, points (1) and (2)<br>Article 2, point (3)<br>Article 2, point (4)<br>Article 2, point (5)<br>Article 1<br>Articles 3 to 10<br>Articles 11 and 12<br>Articles 13 and 14<br>Article 15<br>Article 16(1) and (2), points (a), (b) and (c)<br>Article 16(2), point (d)<br>Article 16(3)<br>- <br>Article 17|

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# ANNEX II COMPET.1 EN

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# ANNEX II COMPET.1 EN