Source: EURLEX
Language: en
Format: md

**EUROPEAN UNION**

**THE EUROPEAN PARLIAMENT** **THE COUNCIL**

**Strasbourg, 23 October 2024**
**(OR. en)**

**2022/0392(COD)** **PE-CONS 97/1/23**
**LEX 2393** **REV 1**

**PI 204**

**COMPET 1313**

**MI 1167**

**IND 717**

**CODEC 2598**

**DIRECTIVE**

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

**ON THE LEGAL PROTECTION OF DESIGNS**

**(RECAST)**

PE-CONS 97/1/23 REV 1

# **EN**

**DIRECTIVE (EU) 2024/…**

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

**of 23 October 2024**

**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 **[2]**,

**1** OJ C 184, 25.5.2023, p. 39.
**2** Position of the European Parliament of 14 March 2024 (not yet published in the Official
Journal) and decision of the Council of 10 October 2024.

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# **EN**

Whereas:

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

Parliament and of the Council **[3]** . In the interests of clarity, that Directive should be recast.

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

Member States, which at the time of its adoption were considered to be those 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 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 **[4]** . The

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

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

(4) In line with its Communication of 19 May 2015 entitled ʻBetter regulation for better results

–
An EU agendaʼ and its commitment 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.

**3** 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).
**4** Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs
(OJ L 3, 5.1.2002, p. 1).

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# **EN**

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

the industrial design system in the Union, 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 industrial design systems and to make

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

and medium-sized enterprises (SMEs). In particular, that revision was requested to address

and consider amendments aimed at supporting and strengthening the complementary

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

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

the Union.

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

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

–
potential An intellectual property action plan to support the EU’s recovery and

resilience’ that, following the successful reform of EU’s trade mark legislation, it would

revise the Union legislation on design protection with a view to simplifying the system and

making it more accessible and efficient, and with a view to updating the regulatory

framework in light of developments in relation to new technologies on the market.

PE-CONS 97/1/23 REV 1 3

# **EN**

(7) In its resolution of 11 November 2021 on an intellectual property action plan to support the

EU’s recovery and resilience [5], the European Parliament welcomed the Commission’s

willingness to modernise the Union legislation on design protection in order to better

support the transition to the digital, sustainable and green economy, 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. In that resolution the

European Parliament also stated that the EU design protection system should be aligned

with the EU trade mark system in order to allow for design holders to prevent design

infringing goods from entering the Union customs territory and called on the Commission

to make it possible for brand owners to put a stop to design counterfeits transiting through

the Union. It also noted that design protection for parts used for the repair of complex

products was only partially harmonised and that this was creating fragmentation in the

internal market and legal uncertainty.

(8) The consultation and evaluation carried out by the Commission 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, in particular,

as a result of the increased accessibility SMEs would have to the design protection system.

**5** OJ C 205, 20.5.2022, p. 26.

PE-CONS 97/1/23 REV 1 4

# **EN**

(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 SMEs, 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.

(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 law providing for protection

other than that conferred by registration or publication as a design, such as Union law

relating to unregistered design rights, or Union or national law 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 law for

registered designs protection and under copyright law, whereby designs protected by

design rights should also be eligible to be protected as copyright works, provided that the

requirements of copyright law are met.

PE-CONS 97/1/23 REV 1 5

# **EN**

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

obtaining a registered design right be harmonised in all the Member States. To that end, it

is necessary to lay down 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 that are not embodied in physical products. Without the list of relevant products

being intended to be exhaustive, it is appropriate to distinguish between products embodied

in a physical object, products visualised in a graphic, or products that are apparent from the

spatial arrangement of items intended to form an interior or exterior environment. In this

context, it should be recognised that animation, such as movement or transition, of the

features of a product, can contribute to the appearance of designs, in particular designs that

are not embodied in a physical object. Furthermore, there is a need for a unitary definition

of the requirements regarding novelty and individual character with which registered

design rights should comply.

(14) 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.

(15) Protection is conferred upon the right holder, by way of registration of a design, for those

design features of a product, in whole or in part, which are shown visibly in an application

for registration of such design and made available to the public by way of publication or

consultation of the relevant file relating to the application.

PE-CONS 97/1/23 REV 1 6

# **EN**

(16) Apart from being shown visibly in an application for registration, design features of a

product do not need to be visible at any particular time or in any particular situation of use

in order to benefit from design protection. As 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 regarding novelty

and individual character. Therefore, those design features of component parts of a complex

product which are excluded from protection for those reasons should not be taken into

consideration for the purpose of assessing whether other design features fulfil the

requirements for protection.

(17) While an indication of the products should be part of an application for registration of a

design, it should not affect the scope of protection of the design as such. Together with the

representation of the design, indications of the products can nevertheless serve to

determine the nature of the product in which the design is incorporated or to which it is

intended to be applied. Furthermore, indications of the products improve the searchability

of designs in the register of designs kept by an industrial property office and increase the

transparency and accessibility of a register. Therefore, prior to registration, indications of

the products need to be accurate, without creating an undue burden on applicants for a

registered design.

PE-CONS 97/1/23 REV 1 7

# **EN**

(18) 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 that user by any other design that forms part of the existing design corpus; this

assessment should take 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.

(19) 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 needs to have an

aesthetic quality. A registered design right could 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.

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

extending protection to the design of mechanical fittings.

(21) The mechanical fittings of modular products can nevertheless constitute an important

element of the innovative characteristics of modular products and represent a major

marketing asset, and therefore should be eligible for protection.

(22) 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.

PE-CONS 97/1/23 REV 1 8

# **EN**

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

protection afforded by registered design rights.

(24) This Directive is without prejudice to the application of the competition rules under

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

(25) For reasons of legal certainty, 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 in this Directive.

(26) 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 Convention for the

Protection of Industrial Property signed in Paris on 20 March 1883 (the ʻParis

Conventionʼ), 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 that are of national interest, Member States should

also be free to provide for specific grounds for non-registrability and invalidity. Such

elements of cultural heritage, considered within the meaning of the Convention Concerning

the Protection of the World Cultural and Natural Heritage adopted by the Unesco General

Conference on 16 November 1972 or, to the extent they constitute a tangible manifestation

of intangible cultural heritage, within the meaning of the Convention for the Safeguarding

of the Intangible Cultural Heritage adopted by the Unesco General Conference at its 32nd

session on 17 October 2003, include, for example, monuments or a group of buildings,

artefacts, handicrafts or costumes.

PE-CONS 97/1/23 REV 1 9

# **EN**

(27) In view of the growing deployment of 3D printing technologies in different areas of

industry, including with the help of artificial intelligence, as well as the resulting

challenges for design right holders to effectively prevent illegitimate copying of their

protected designs, it is appropriate to provide that the creation, downloading, copying and

making available of any medium or software which records the design for the purpose of

reproduction of a product that infringes the protected design, constitutes use of the design

which should be subject to the right holder’s authorisation.

(28) 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

Organization (WTO) framework, in particular Article V to the General Agreement on

Tariffs and Trade (GATT 1947) on freedom of transit, and, as regards generic medicines,

the Doha Declaration on the TRIPS Agreement and Public Health, adopted by the WTO

Ministerial Conference on 14 November 2001, the holder of a registered design right

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

from third countries into the Member State where the design is registered, without being

released for free circulation there, where, without right holder’s authorisation, the design is

identically incorporated in or applied to such products, or the design cannot be

distinguished in its essential aspects from such products.

PE-CONS 97/1/23 REV 1 10

# **EN**

(29) To that end, it should be permissible for registered design right holders to prevent the entry

of infringing products and the placement of such products 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 **[6]**, including 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.

(30) 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 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.

**6** 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).

PE-CONS 97/1/23 REV 1 11

# **EN**

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

appropriate set of limitations. Apart from acts carried out privately and for non-commercial

purposes and those carried out 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, critique 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 to be

fair as long as it is 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, in particular the freedom of expression.

(32) 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.

PE-CONS 97/1/23 REV 1 12

# **EN**

(33) 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. The repairability of

products is at the core of a sustainable economy, as highlighted in the Commission

communication of 11 December 2019 on ʻThe European Green Dealʼ.

PE-CONS 97/1/23 REV 1 13

# **EN**

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

ensure fair competition to approximate the design protection laws of Member States as

regards the use of protected designs for the purpose of permitting the repair of a complex

product so as to restore its original appearance through the insertion of a ʻrepair clauseʼ

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 that 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 one of the defences provided for under this Directive to design

right infringement. In addition, in order to ensure that consumers are not mislead and are

able to make an informed decision between competing products that can be used for the

repair, it should be explicitly provided for that the repair clause cannot be invoked by a

manufacturer or seller of a component part who has failed to duly inform consumers about

the commercial origin, and the identity of the manufacturer, of the product to be used for

the purpose of the repair of the complex product. That detailed information should be

provided through a clear and visible indication on the product or, where that is not

possible, on its packaging or in a document accompanying the product, and should include

at least the trade mark under which the product is marketed, and the name of the

manufacturer.

PE-CONS 97/1/23 REV 1 14

# **EN**

(35) With a view to preserving the effectiveness of the liberalisation of the spare parts

aftermarket sought by this Directive and in line with the case law [7] of the Court of Justice

of the European Union, in order to be able to benefit from the repair clause exemption

from design protection, the manufacturer or seller of a component part of a complex

product is under a duty of diligence to ensure, through appropriate means, in particular

contractual means, that downstream users do not intend to use the component parts at issue

for purposes other than that of repair so as to restore the original appearance of the

complex product. This however should not require the manufacturer or seller of a

component part of a complex product to guarantee, objectively and in all circumstances,

that the parts they make or sell are, ultimately, actually used by end users for the sole

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

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

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 priority is claimed, before the date of priority, that third

person 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, is entitled to a limited

exploitation of that design.

**7**
Judgment of the Court of Justice of 20 December 2017, _Acacia Srl_ v _Pneusgarda Srl_ and
_Audi AG and Acacia Srl and Rolando D’Amato_ v _Dr. Ing. h.c.F. Porsche AG_, joined Cases
C-397/16 and C-435/16, ECLI:EU:C:2017:992.

PE-CONS 97/1/23 REV 1 15

# **EN**

(37) In order to facilitate the marketing of design-protected products, in particular by SMEs and

individual designers, and to increase awareness of the design registration regimes existing

both at Union and national level, a commonly accepted notice consisting of the symbol `Ⓓ`

should be available for use by design right holders and others with their consent.

(38) 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.

(39) It is necessary to lay down essential common rules regarding the requirements and

technical means for the representation of designs in any form of visual reproduction at the

stage of filing the application for registration, taking into account technical advances in

relation to the visualisation of designs and the needs of Union industry in relation to new

digital designs. In addition, Member States should establish harmonised standards by

means of convergence of practices.

(40) For greater efficiency it is also appropriate to allow applicants for registered designs to

combine several designs in one multiple application 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 (ʻLocarno Classificationʼ), established by the Locarno Agreement

(1968).

PE-CONS 97/1/23 REV 1 16

# **EN**

(41) The usual 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 across the Union.

(42) 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 the registration and other procedural

burdens for applicants to a minimum, 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 of their own motion to the absence of the grounds for

non-registrability exhaustively enumerated in this Directive.

(43) For the purpose of offering another means of declaring design rights invalid,

Member States should be allowed to provide for an administrative procedure for the

declaration of invalidity which is aligned to the extent appropriate to that applicable to

registered EU designs.

PE-CONS 97/1/23 REV 1 17

# **EN**

(44) 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 the 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.

(45) 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.

(46) 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 **[8]** .

**8** 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).

PE-CONS 97/1/23 REV 1 18

# **EN**

(47) 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.

(48) 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

to this Directive,

HAVE ADOPTED THIS DIRECTIVE:

PE-CONS 97/1/23 REV 1 19

# **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 in 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.

PE-CONS 97/1/23 REV 1 20

# **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;

(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 and/or materials, of the

product itself and/or of 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 a computer program,

regardless of whether it is embodied in a physical object or materialises in a non-physical

form, including:

(a) packaging, sets of articles, spatial arrangements of items intended to form 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.

PE-CONS 97/1/23 REV 1 21

# **EN**

## **Chapter 2** **Substantive law on designs**

_Article 3_

_Protection requirements_

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

shall confer exclusive rights upon their holders in accordance with 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.

PE-CONS 97/1/23 REV 1 22

# **EN**

_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.

_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.

PE-CONS 97/1/23 REV 1 23

# **EN**

_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.

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, the designer’s successor in title, or a third person as a result of

information provided or action taken by the designer, or the designer’s 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.

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# **EN**

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 the designer’s 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 of this Article, 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.

_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.

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_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 a design right shall arise upon registration by the office.

2. A design shall be registered for a period of five years calculated from the date of filing of

the application for registration. The right holder may renew the registration, in accordance

with Article 32, for one or more periods of five years each, up to a total term of protection

of 25 years from the date of filing of the application for registration.

_Article 11_

_Right to the registered design_

1. The right to the registered design shall vest in the designer or the designer’s successor in

title.

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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 the employee’s duties or following the

instructions given by the employee’s 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.

_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 is contrary to public policy or to accepted principles of morality, as

provided for in Article 8; or

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(c) 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.

2. Member States may provide that a design is to 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 its registration

has been given in conformity with the law of the Member State.

3. Member States may provide that a design is to be refused registration where it contains a

total or partial reproduction of elements belonging to cultural heritage that are of national

interest.

_Article 14_

_Grounds for invalidity_

1. If the design has been registered, the design right shall be declared invalid in any of 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 provided for in Articles 3 to 8;

(c) the design has been registered in breach of Article 13(1), point (c), or of

Article 13(2);

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(d) by virtue of a decision of the competent court or authority, the holder of the design

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

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

public 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 date

of filing of the application, or if priority is claimed, the date of priority of the design:

(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;

(f) 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;

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

law of the Member State concerned.

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2. If the design has been registered, Member States may provide that the design right is to be

declared invalid, where the design contains a total or partial reproduction of elements

belonging to cultural heritage that are of national interest.

3. 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; or

(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 law governing it.

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

the person or entity concerned by the improper use.

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

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

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

invoked solely by the following:

(a) the applicant for or the holder of the earlier right;

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

concerned to exercise the right; or

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(c) a licensee authorised by the proprietor of the earlier right.

7. A registered design right shall not be declared invalid where the applicant for or a holder of

a right referred to in paragraph 1, points (e), (f) and (g), consented expressly to the

registration of the design before submitting the application for a declaration of invalidity or

the counterclaim.

8. 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.

_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 following, in particular, may be prohibited under paragraph 1:

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

incorporated or to which it is applied;

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(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 which records the design for the purpose of enabling a product referred to in

point (a) to be made.

3. 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 the right holder’s

authorisation has not been given.

The right referred to in the first subparagraph of this paragraph 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.

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_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 for the legal validity of a registered design

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

registered in breach of Article 13(1), point (c).

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.

_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;

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(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 ships and aircraft referred to in point (f);

(h) the execution of repairs on ships and aircraft referred to in point (f).

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 referred to in 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.

_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 shall not 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, and

the identity of the manufacturer, 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.

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3. The manufacturer or seller of a component part of a complex product shall not be required

to guarantee that the component parts they make or sell are ultimately used by end users

for the sole purpose of repair so as to restore the original appearance of the complex

product.

4. Where on … [ _date of entry 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 … [ _eight years from the date of_

_entry into force of this Directive_ ] to provide that protection for designs for which

registration has been applied for before … [ _date of entry into force of this Directive_ ].

_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 placed on the market in the Union by the holder of

the design right or with the holder’s consent.

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_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 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 referred to in paragraph 1 shall entitle the third party 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 of the application or priority date of

the registered design right.

_Article 22_

_Relationship to other forms of protection_

This Directive shall be without prejudice to any provisions of Union law 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.

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_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 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.

## **Chapter 3** **Procedures**

_Article 25_

_Application requirements_

1. An application for registration of a design shall contain at least all of the following:

(a) a request for registration;

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(b) information identifying the applicant;

(c) a sufficiently clear representation of the design which permits 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.

_Article 26_

_Representation of the design_

1. The design shall be represented in any form of visual reproduction, either in black and

white or in colour. The reproduction may be static, dynamic or animated and shall be

effected by any appropriate means, using generally available technology, including

drawings, photographs, videos, computer imaging or computer modelling.

2. 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.

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3. 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

combined.

4. The design shall be represented alone, to the exclusion of any other matter.

5. Matter for which no protection is sought shall be indicated by way of visual disclaimers.

Any such visual disclaimers shall be used consistently.

6. 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 for the means to be 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. That

possibility shall not be 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

Locarno Classification.

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_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), (b) and (c), are filed with

the office by the applicant.

2. Without prejudice to paragraph 1 of this Article, the date of filing 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).

3. 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 the design applied for 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 priority is claimed, from the date of priority.

2. Once the design has been registered, 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 requested 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.

5. 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.

6. Member States may provide, by way of derogation from paragraphs 4 and 5, that the office

is to publish the registered design only at the 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 such a request.

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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 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;

(b) the design should not have been registered because it is in breach of Article 13(1)(c);

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

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

3. The administrative procedure referred to in paragraph 1 shall provide that the following

persons are to be entitled to file an application for a declaration of invalidity:

(a) in the case of paragraph 2, point (a), of this Article, the persons, groups or bodies

referred to in Article 14(3);

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

Article 14(4);

(c) in the case of paragraph 2, point (c), of this Article, at least the persons referred to in

Article 14(6), points (a) and (b).

_Article 32_

_Renewal_

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

design right or any person authorised to request the renewal 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 inform the holder of the registered design right of the expiry of the

registration at least six months before the date of such 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 within a

period of at least six months 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.

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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 in respect of

those designs which the amount paid is clearly 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.

_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.

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_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.

## **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, Article 6, Articles 10 to 19, Article 21,

Articles 23 to 30 and Articles 32 and 33 by … [ _36 months from the date of entry into force_

_of this Directive_ ]. They shall immediately 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.

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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.

_Article 37_

_Repeal_

Directive 98/71/EC is repealed with effect from … [ _36 months from the date of entry into force of_

_this Directive_ ], 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 set out 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_ .

However, Articles 4, 5, 7, 8, 9, 20 and 22 shall apply from … [ _36 months from the date of entry into_

_force of this Directive_ ].

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_Article 39_

_Addressees_

This Directive is addressed to the Member States.

Done at Strasbourg,

_For the European Parliament_ _For the Council_

_The President_ _The President_

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**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 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>– <br>Article 13(1), points (a), (b) and (c)<br>– <br>Article 13(2), points (a), (b) and (c)<br>– <br>Article 14<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<br>Article 18(1), points (a), (b) and (c)<br>Article 18(1), points (d) and (e)<br>Article 18(1), points (f), (g) and (h)<br>Article 18(2)<br>– <br>Article 19|

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# ANNEX II EN

|Directive 98/71/EC|This Directive|
|---|---|
|Article 15<br>– <br>Article 16<br>Article 17<br>– <br>Article 18<br>Article 19<br>– <br>Article 20<br>Article 21<br>– <br>–|Article 20<br>Article 21<br>Article 22<br>Article 23<br>Articles 24 to 35<br>– <br>Article 36<br>Article 37<br>Article 38<br>Article 39<br>Annex I<br>Annex II|

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# ANNEX II EN