Source: EURLEX
Language: en
Format: md

**COMMISSION OF THE EUROPEAN COMMUNITIES**

**Brussels, 21.11.1997**

**COM(97)** **622** **final** **- COD 464**

**OPINION OF THE COMMISSION**

**pursuant to Article 189 b (2) (d) of the EC Treaty,**

**on the European Parliament's amendments**
**to the Council's common position regarding the**

**proposal for a**
**EUROPEAN PARLIAMENT AND COUNCIL DIRECTIVE**

**on the legal protection of designs**

**AMENDING THE PROPOSAL OF THE COMMISSION**

**pursuant to Article** **189** **a (2) of the EC Treaty**

**1.** **Historical background**

**• On 3 December** **1993,** **the Commission submitted proposals for a Regulation on the**
**Community design** **[1]** **and for a Directive on the legal protection of designs** **[2]** **("the**
**Directive").**

**• Parliament decided to discuss the proposal for the Directive first and to adopt a**
**position on the proposal for a Regulation when it conducts the second reading of**
**the proposal for the Directive. Following this decision, Parliament adopted its**
**opinion on the Directive on 12 October** **1995** **[3]** **.**

**• The Economic and Social Committee adopted a first opinion on 6 July** **1994** **[4]** **and**
**an additional opinion on 22 February 1995** **[5]** **.**

**• In response to Parliament's opinion the Commission presented an amended**
**proposal for a Directive on 14 March** **1996** **[6]** **.**

**• The Council adopted its common position on** **17** **June** **1997** **[7]** **.**

**• The Commission adopted its position on the Council's common position on** **19**
**June 1997 and communicated it to the European Parliament** **[8]** **.**

**•** **On 22 October** **1997,** **the European Parliament voted in favor of 12 amendments to**
**the common position in second reading.**

**2.** **Objective of the Commission proposal**

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

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

3. Opinion from the Commission to the amendments from Parliament

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

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

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

3.1 Amendments which the Commission accepted

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

reasons.

re Amendment No 2

Re Amendment No 3

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

Thus, the common position does not comply with
Parliament's and the Commission's wish to lower the

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

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

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

re Amendment No 4 The Commission supports Parliament's amendment to
interpret the concept of "normal use" restrictively (Article
3(4)).

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

re Amendment No 7

re Amendment No 9

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

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

re Amendment No 10 The amendment re-introduces the repair clause, as redrafted
by the Commission in its amended proposal of 1996.

The Commission continues to believe that the clause is

justified and reasonable.

re Amendment No 11 The amendment provides for the free movement of
component parts which are commercialised pursuant to the
repair clause (amendment No 10).

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

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

**3.2 Amendments which the Commission did not accept**

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

**reasons.**

**re Amendment No 5**

**re Amendment No 6**

**re Amendment No** **12**

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

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

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

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

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

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

**Amended proposal for a**

**European Parliament and Council Directive on the legal protection of designs**

###### **A.**

Ccramoa position ol'ihe OOURCU - Àn*ceàîî«îïs f;v if ànUrani

**(Amendment 2)**
**Recital 13**

**13.** **Whereas the assessment as to whether a**

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

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

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

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

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

**(Amendment 4)**
**Article 3(4)**

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

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

**(Amendment 7)**
**Article 10**

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

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

**(Amendment 9)**
**Article 13(2), introduction**

**2.** **In** addition, **the** **rights** conferred by a design
**right** upon **registration shall not** extend to:

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

Transitional provision

(Amendment 10)
Article 14

Use of **a** design for repair purposes

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

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

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

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

## **9**

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

**(d}** **the third party has:**

**(i)** **notified the right holder of the**
**intended use of the design:**

**(ii)** **offered the right holder a fair and**

**reasonable remuneration for that**

**use:** **and**

**(iii)** **offered to provide the right holder**
**in a regular and reliable manner**

**with information as to the scale of**

**the use made of the design under**
**this provision.**

_**T**_ **Save as otherwise** **agreed,** **the obligations**
**mentioned in paragraph 1(d) shall be incurred by**
**the manufacturer or. in the case of the import of**
**a component part not manufactured in the**
**Member State where the protection** **applies,** **by**
**the importer of the component part into which**
**the design is to be incorporated or to which it is**
**to be applied.**

_**y**_ **In calculating the** **remuneration,** **the**
**investment made in development of the relevant**
**design** **shall** **be** **the** **primary** **basis** **for**

**consideration.**

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

**(Amendment** **11** **)**

**Article** **15**

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

**with his consent.**

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

**with his consent or in accordance with Article**

**14.**

**(Amendment** **13)**

**Article** **18**

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

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

**/ /**

##### **ISSN 0254-1475**

### COM(97) 622 final

# **DOCUMENTS**

#### EN 06 08 02 10 Catalogue number : CB-C0-97-638-EN-C ISBN 92-78-27794-0

**Office for Official Publications of the European Communities**

**L-2985** **Luxembourg**