CELEX: 51997PC0622
Language: en
Date: 1997-11-21
Title: Amended proposal for a European Parliament and Council Directive on the legal protection of designs

COMMISSION OF THE EUROPEAN COMMUNITIES
                                      Brussels, 21.11.1997
                                      COM(97) 622final- 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
 ---pagebreak---  ---pagebreak---  1. Historical background
 • On 3 December 1993, the Commission submitted proposals for a Regulation on the
     Community design1 and for a Directive on the legal protection of designs2 ("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 19953.
• The Economic and Social Committee adopted a first opinion on 6 July 19944 and
    an additional opinion on 22 February 19955.
• In response to Parliament's opinion the Commission presented an amended
    proposal for a Directive on 14 March 19966.
• The Council adopted its common position on 17 June 19977.
• The Commission adopted its position on the Council's common position on 19
    June 1997 and communicated it to the European Parliament8.
•    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 C I 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.
 ---pagebreak--- 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          The 13th 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.
Re Amendment No 3          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.
 ---pagebreak--- 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   The amendment clarifies that the total term of protection for
                    designs shall be 25 years from the date of filing.
re Amendment No 9   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.
 ---pagebreak--- 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    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.
re Amendment No 6    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.
re Amendment No 12   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.
 ---pagebreak---                         Amended proposal for a
European Parliament and Council Directive on the legal protection of designs
 ---pagebreak---                                                         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                   !3. • Whereas the- assessment as to whether
design has individual character should be based              a design has indivktaal fâmziïtë: should be based
on whether the overall impression produced on                on whether the overall impression produced on
an informed user viewing She design clearly                  an informed user viewing She ùmga differs from
differs from the existing design corpus; taking              the existing - design corpus, taking into
into consideration the nature of the product to              consideration the stature of the product to which
which the design is applied or in which it is                the design is applied cr in which it is
incorporated, and in particular the industrial               incorporated, mé in particuiar the industrial
sector to which it belongs and the degree of                 sector to which it belongs and the degree of
freedom of the designer in developing the                    freedom of the designer in developing the
design;                     • ' „                            design;
                                                 (Amendment 3)
                                                  Article 3(3)(a)
 (a) if the component part, notwithstanding its              (a)       if the component part, once it has been
      having been incorporated into the complex                        incorporated into the complex
      product, could reasonably be expected to                         product, remains visible during normal
      remain visible during normal use of the                          use of the latter, and
      latter, and
                                                 (Amendment 4)
                                                   Article 3(4)
 4. "Normal use" within the meaning of                       4. "Normal use" within the meaning of
 paragraph (3}(a) shall mean any use other than              paragraph 3(a) shall mean use by the end user-
 maintenance, servicing or repair.                           excluding maintenance, servicing or repair work.
 ---pagebreak---                                               (Amendment 7)
                                                Article 10
Upon registration, a design which meets the              Upon registration, a design which meets the
requirements of Article 3(2) shall be protected          requirements of Article 3(2) shall be protected
by a designrightfor one or more periods of five          by a designrightfor one or more periods of five
years from the date of filing of the application.        years from the date of filing of the application.
The term of protection may be renewed at the             The right holder may renew the term of
request of the right holder for one or more              protection for one or more periods of five years
periods of five years each, up to a total term of        each, up to a total term of 25 years from the
25 years from the date of filing.                        date of filing.
                                              (Amendment 9)
                                       Article 13(2), introduction
2. In addition, therightsconferred by a design           2. In addition, the rights conferred by a design
right upon registration shall not extend to:             right upon registration may not be exercised in
                                                         respect of:
                                             (Amendment 10)
                                                Article 14
Transitional provision                                   Use of a design for repair purposes
Until such time as amendments to this Directive          -L By way of derogation from Article 12. the
are adopted upon proposal by the Commission              rights conferred bv a design right shall not be
in accordance with the provisions of Article 18,         exercised against third parties who use the
Member States may maintain in force or                   design, provided that:
introduce any provisions affecting the use of a
protected design for the purpose of permitting           (a)   the product incorporating the design or to
the repair of a complex product so as to restore               which the design is applied is a component
its original appearance, where the product                     part of a complex product upon whose
incorporating the design or to which the design                appearance the protected design is
is applied constitutes a component part of a                   dependent; and
complex product upon whose appearance the
protected design is dependent                            (b)   the purpose of such a use is to permit the
                                                               repair of the complex product so as to
                                                               restore its original appearance, and
 ---pagebreak--- 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.
 ---pagebreak---                                               (Amendment 11 )
                                                  Article 15
  The rights conferred by a design right upon                 The rights conferred by a design right upon
   registration shall not extend to acts relating to a        registration shall not extend to acts relating to a
   product in which a design included within the              product in which a design included within the
   scope of protection of the design right is                 scope of protection of the design right is
   incorporated or to which it is applied, when the           incorporated or to which it is applied, when the
   product has been put on the market in the                  product has been put on the market in the
   Community by the holder of the design right or             Community by the holder of the design right or
   with his consent.                                          with his consent or in accordance with Article
                                                               14.
                                              (Amendment 13)
                                                  Article 18
Five years after the implementation date                   Five years after the implementation date
specified in Article 19, the Commission shall              specified in Article 19, the Commission shall
submit an analysis of the consequences of the              submit an analysis of the consequences of the
provisions of this Directive for Community                 provisions of this Directive for competition and
industry, for consumers, for competition and for           the functioning of the internal market, for the
the functioning of the internal market. It shall           industrial sectors which are most affected,
propose to the European Parliament and the                 particularly manufacturers of complex products
Council any changes to this Directive needed to            and component parts, and for consumers If
complete the internal market in respect of                 necessary it shall propose to the European
component parts of complex products and any                Parliament and the Council any changes to this
other changes which it considers necessary.                Directive which prove necessary in the light of
                                                           consultation with the parties most affected
 ---pagebreak---                                             //
                                                                  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
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