CELEX: 51993PC0344
Language: en
Date: 1993-12-03
Title: Proposal for a EUROPEAN PARLIAMENT AND COUNCIL DIRECTIVE on the legal protection of designs

COMMISSION OF THE EUROPEAN COMVTUNITIES
                                      C0M(93) 344 final-COD 464
                                      Brussels, 3   December 1993
                          Proposal for a
       EUROPEAN PARLIAMENT AND COUNCIL DIRECTIVE
                on the legal protection of designs
                 (presented by the Commission)
 ---pagebreak---                              EXPLANATORY MEMORANDUM
                                      Part One: General
    Introduction
1.1 The present 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.
1.2 Apart from the Benelux where a regional design protection system is in force, the legal
    protection of designs at the present time is on a national basis. Therefore, the legal
    effect of protection is limited to the territory of the Member State in question or the
    Benelux countries.
    The territorial limitation of protection and the very different approaches of the national
    protection systems make it necessary for the functioning of the internal market that
    action is taken at a Community level. For the reasons explained in the Explanatory
    Memorandum for the Proposal for a Council Regulation on the Community Design(1),
    a Regulation introducing a Community design is necessary.
1.3 Introducing a Community design protection system raises the question of what should
    become of the existing national or regional protection systems. The Community
    protection system to be created by the Regulation cannot supersede existing national
    protection systems overnight. A period of at least temporary co-existence will be
    necessary, as occurs in the approach adopted for trademarks, where national trademarks
    will co-exist with the Community trademark. This is because even when the
    Community Design enters into force and becomes the preferred means of protection for
    designers and their successors in title, national authorities must still maintain their
    registration systems to cater for acquired rights. Registrations already taken out by
    national right holders must continue to be renewable up to the maximum period of
    protection foreseen by the legislation of the country in question. For this reason,
    national authorities must be in a position to maintain registration systems. In addition,
    even after the Community Design has become the preferred protection system, it is
    inevitable that some national enterprises with only local markets (craftsmen, creators
    of works of applied art, producers of products adapted to the demands of local markets)
    will still wish to take out only national protection.
    Also, it must be borne in mind that switching from a national market approach to a
    Community market approach could be a slow process for some design right holders
    because they may need some time to become accustomed to the Community system.
    Industry may also want to "test" on its merits the new Community instrument for a
    period before abandoning the familiar national protection systems. National filings may
(i)
 ---pagebreak---     be used to acquire priority rights in other States within and outside the Community,
    under the Paris Convention and the Hague Agreement; they may also be used to acquire
    a priority right in respect of a registered Community design.
1.4 The co-existence of national and Community systems presupposes, however, that
    national design protection laws are, at least in essential respects, harmonized to become
    mutually compatible as regards their most salient features and also compatible with the
    future Community protection system. Conflicting provisions would impede the creation
    of internal market conditions. If, for example, one Member State offered protection
    under more lenient conditions than the Regulation on the Community design, and for
    a longer period of time and with broader scope and contents, producers could seek to
    exploit these differences by relying exclusively on (different) national protections,
    thereby jeopardizing the existence of the Community design.
    Therefore this proposal for a Directive on the legal protection of designs is an essential
    accompaniment to the Regulation on the Community design.
1.5 In accordance with the principle of subsidiarity the approximation need not extend to
    all aspects of the national specific protection laws, and it is sufficient to bring into line
    those features which are necessary for the co-existence of specific national and
    Community design protection. These concern the definition of "design", the requirement
    for obtaining protection including the grounds for exclusion, non-prejudicial disclosures
    as to the requirements' individual character and novelty, the scope and term of
    protection, the grounds for refusal or invalidity, the definition of the rights conferred
    by the design including their limitations and exhaustion of rights. There is no cause to
    interfere in matters such as existing national provisions relating to the official
    procedures and to the examination as to fulfilment of requirements for protection.
2.  The legal basis
     The proposed Directive pursues in respect of industrial designs and the goods
    embodying industrial designs the establishment and the functioning of a common
    market in design products and hence their free movement, undistorted competition in
    design products and the due protection of this form of industrial and commercial
    property.
    There is therefore an exclusive competence for the Community to act.
    Article 100a EEC empowers the Community, in order to achieve the objectives of the
    internal market, to adopt the necessary approximation measures in the form of a
    Directive harmonizing the substantive features of national design protection laws.
 ---pagebreak---                              Part Two: Commentary on the Articles
                                             Article 1
This Article defines "design" and "product" and is identical to Article 3 of the proposal for
a Regulation except mat semiconductor products are not excluded. This is because the
Directive^ on the legal protection of topographies of semiconductor products does not
preclude implementation of its provisions by means of national designs legislation. Reference
may otherwise be made to the commentary on mat Article in the Explanatory Memorandum
to the Regulation.
                                             Article 2
This Article defines the scope of application of the Directive. Its provisions apply only to
registered design rights or to applications for such rights.
Unregistered design rights are not included. Most national specific design laws do not provide
such a right and mere appears to be no reason to make the introduction of unregistered design
rights mandatory where they do not exist.
                                             Article 3
Paragraph 1 explicitly makes clear that Member States must protect designs by way of
specific design protection law and may not rely exclusively upon copyright law for the
protection of design.
Paragraph 2 sets out the requirements for protection: mat the design is new and that it has
an individual character.
                                        Articles 4, 5 and 6
These Articles define the requirements' "new" and "individual character". The provisions
correspond to Articles 4, 5, 6 and 8 concerning registered designs of the proposal for a
Regulation. Therefore, reference is made to the commentary on these Articles in the
Explanatory Memorandum to the Regulation.
                                         Articles 7 and 8
Articles 7 and 8 set the limits to what is protectable under a design right and correspond to
 Articles 9 and 10 of the proposal for a Regulation. Reference is made to the commentary on
these Articles in the Explanatory Memorandum to the Regulation.
 (2)
       OJ No L 24, 27.1.1987, p. 36.
 ---pagebreak---                                         Articles 9 anp! 10
The scope of protection is defined in Article 9 which corresponds to Article 11 of the
proposal for a Regulation. Commencement and term of protection in Article 10 correspond
to those set out in Article 13 of the proposal for a Regulation. Reference is made to the
comments in the Explanatory Memorandum to the Regulation.
                                            Article 11
Paragraph (1) and (2) enumerate the cases in which a design right can be declared invalid or
be excluded from registration. This enumeration corresponds to Article 27 of the proposal for
a Regulation.
Paragraph (3) leaves it to the national lawmaker by derogation from paragraphs (1) and (2)
to determine how to handle those design rights and applications where the application for a
design right has been made before the provisions necessary to comply with this Directive
enter into force.
                                            Article 12
Paragraph (1) defines the right conferred by a registered design right and is in conformity
with Article 21 of the proposal for a Regulation. Reference is therefore made to the
commentary on mat Article in the Explanatory Memorandum to the Regulation.
Paragraph (2) makes it clear mat design rights that have come into existence before the day
the provisions necessary to comply with this Directive enter into force, will continue to be
treated according to the legal situation when the right came into existence.
                                        Articles 13 and 15
Article 13 contains a number of limitations of the rights conferred by the registered design
right. Article IS deals with the exhaustion of rights. They correspond to Articles 22 and 24
of the proposal for a Regulation. Reference is therefore made to the commentary on these
Articles in the Explanatory Memorandum to the Regulation.
                                            Article 14
This provision is necessary to make national design rights compatible with the Community
Design. Reference is made to the commentary on Article 23 of the Proposal for a Regulation.
                                            Article 16
In some cases a third party may have an interest in obtaining an invalidity decision even after
the design right has expired or has been surrendered, for example if the design has been
enforced against him and information obtained later proves that the design right was invalid
from the outset. The provision corresponds to Article 26(2) of the proposal for a Regulation.
 ---pagebreak---                                         Articles 17 and 18
The protection of the appearance of a product very often results not only from the specific
design laws in the Member States, but from the concurrent application of a number of legal
instruments, even though the measure of protection conferred by each of them and the
frequency with which users resort to each of them vary considerably from one Member State
to another.
The main alternative legal instrument traditionally used is protection under national copyright
law which is dealt with in Article 18. But protection might be granted as well under
trademark, patent and utility model and unfair competition laws.
One Member State has introduced the protection of unregistered design rights, which to a
certain extent could be claimed to replace copyright protection in that State.
Therefore it is necessary to set out in the Directive that the application of other national law
is left untouched.
                                            Article 18
Article 18 sets out in accordance with the provisions of Article 100 of the proposal for a
Regulation that the cumulative application of copyright law and specific design protection law
is mandatory. This implies that national legislation needs to be amended where it foresees that
copyright protection cannot or can only under certain conditions be cumulated with protection
under specific design protection law.
The conditions of application of copyright protection and in particular the question relating
to the level of originality required for the application of copyright protection is, however,
pending a possible future harmonization of the originality requirement left to national law.
Provisions of national law setting out specific conditions for the application of copyright
protection such as, for example, the condition relating to "scindibilità" in Italian law could
more easily be removed, and such removal is therefore suggested by the provisions of
Article 18.
To avoid in certain cases a violation of the principle of non-discrimination on the grounds of
nationality enshrined in Article 7 EEC it is necessary not only to foresee that the principle
of "cumulation" of specific design protection and copyright protection is applied by all
Member States, but also to foresee that the derogation from the principle of national treatment
authorized by virtue of Article 2(7) of the Berne Convention for the Protection of Literary and
Artistic Works is not applied as regards nationals of Community Member States. The
provision of Article 18(2) sets out this important principle.
 ---pagebreak---                                           Proposal for a
                   EUROPEAN PARI^AMENT AND COUNCIL DIRECTIVE
                                on the legal protection of designs
THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,
 Having regard to the Treaty establishing the European Community and in particular Article
 100a thereof,
 Having regard to the proposal by the Commission(1),
 Having regard to the opinion of the Economic and Social Committee(2),
 (1)   Whereas the objectives of the Community as laid down in the Treaty include
       establishing an ever closer union among the peoples of Europe, fostering closer
       relations between the States belonging to the Community, and ensuring the economic
       and social progress of the Community countries by common action to eliminate the
       barriers which divide Europe; whereas to that end the Treaty provides for the
       establishment of an internal market and includes the abolition of obstacles to the free
       movement of goods and the institution of a system ensuring that competition in the
       common market is not distorted; whereas an approximation of the laws of the Member
       States on the legal protection of designs would further those objectives;
 (2)   whereas designs are not at present protected in all Member States by specific legislation
       and such protection, where it exists, has different attributes;
 (3)   whereas such differences in the legal protection of designs offered by the legislations
       of the Member States have direct and negative effects on the establishment and
       functioning of the internal market as regards goods embodying designs and whereas
       such differences will distort competition within the internal market;
 (4)   whereas it is therefore necessary for the proper functioning of the internal market to
       provide for specific design protection law in all Member States and to approximate the
       design protection laws of the Member States;
 (5)   whereas in doing so it is important to take into consideration the solutions and the
       advantages with which the Community Design system will provide undertakings
       wishing to acquire design rights;
 (6)   whereas it is unnecessary to undertake a full-scale approximation of the design laws of
       the Member States, and it will be sufficient if approximation is limited to those national
       provisions of law which most directly affect the functioning of the internal market;
 0)    OJNo
  (2)
        OJNo
 ---pagebreak---      whereas the objectives of this limited approximation cannot be sufficiently achieved by
     the Member States acting alone;
(7)  whereas Member States should accordingly remain free to fix the procedural provisions
     concerning registration and invalidation of design rights and provisions concerning the
     effects of such invalidity;
(8)  whereas this Directive does not exclude the application to designs of the legislation of
     the Member States other than that relating to the specific protection acquired by
     registration, such as the legislation relating to unregistered design rights, trademarks,
     patents and utility models, unfair competition or civil liability;
(9)  whereas the attainment of the objectives of the internal market in the field of designs
     may only be fully realized following further harmonization of the relevant provisions
     of the copyright laws of Member States, in particular those relating to the criterion of
     originality; whereas, pending such further harmonization, it is important to establish the
     principle of cumulation of protection under specific registered design protection law and
     under copyright law, whilst leaving Member States free to establish the extent of
     copyright protection and the conditions under which such protection is conferred;
     whereas it is, however, necessary to abolish in the relationship between Member States
     the requirement that protection under copyright law shall be afforded only subject to
     reciprocity in the country of origin of the design, as such a requirement would run
     contrary to the principle of non-discrimination;
(10) whereas the attainment of the objectives of the internal market require that the
     conditions for obtaining a registered design right be not only identical in all the
     Member States but also identical to those required for obtaining a registered
     Community design; whereas to that end it is necessary to give a unitary definition of
     the notion of design and of the requirements as to novelty and individual character with
     which registered design rights must comply;
(11) whereas semiconductor products should not be excluded as products whose appearance
     could form the subject of a design right, since Member States may choose design
     legislation to implement the provisions of Council Directive 87/54/EEC of 16 December
      1986 on the legal protection of topographies of semiconductor products(,).
(12) whereas it is essential, in order to facilitate the free movement of goods, to ensure that
     registered design rights confer upon the right holder the same protection in all Member
     States and that this protection is identical to the protection afforded by the registered
     Community design;
(13) whereas, in conformity with the applicable provisions on the Community design, the
     interoperability of products of different makes should not be hindered by extending the
     protection to the design of mechanical fittings;
(14) whereas the mechanical fittings of modular products may nevertheless constitute an
     important element of hie innovative characteristics of modular products and present a
     major marketing asset and therefore should be eligible for protection;
O)   OJ No L24, 27.1.1987, p. 36.
 ---pagebreak--- (15) whereas it is fundamental for the functioning of the internal market to unify the term
      of protection afforded by registered design rights in conformity with the solution
      adopted for the registered Community design;
(16) whereas the legal protection of design might in certain circumstances allow the creation
      of monopolies in generic products and captive markets by improperly binding
      consumers to a specific make of product, and thus the introduction of a provision is
      necessary in order to make the reproduction of designs applied to parts of complex
      products possible for repair purposes under very specific conditions;
(17) whereas the provisions of this Directive are without prejudice to the application of the
      competition rules under Articles 85 and 86 of the Treaty;
(18) whereas the grounds for refusal of registration in those Member States which provide
      for substantive examination of applications prior to registration, and the grounds for the
      invalidation of registered design rights in all the Member States, must be exhaustively
      enumerated,
HAVE ADOPTED THIS DIRECTIVE:
                                             Article 1
For the purpose of this Directive:
(a)   "design" means the appoarance of the whole or a part of a product resulting from the
      specific features of the lines, contours, colours, shape and/or materials of the product
      itself and/or its ornamentation;
(b)   "product" means any industrial or handicraft item, including parts intended to be
      assembled into a complex item, sets or compositions of items, packaging, get-ups,
      graphic symbols and typographic typefaces, but excluding a computer program.
                                             Article 2
This Directive shall apply to:
(a)   design rights registered with the central industrial property offices of the Member
      States;
(b)   design rights registered at the Benelux Design Office;
(c)   design rights registered under international arrangements which have effect in a Member
      State;
(d)   applications for design rights referred to under (a) to (c).
                                      /
 ---pagebreak---                                            Article 3
(1) Member States shall protect the designs upon registration, by conferring exclusive rights
    upon mem in accordance with the provisions of the Directive.
(2) A design shall be protected by a design right to the extent that it is new and has an
    individual character.
(3) A design of a product which constitutes a part of a complex item shall only be
    considered to be new and to have an individual character in so far as the design applied
    to the part as such fulfils the requirement as to novelty and individual character.
                                           Article 4
(1) A design shall be considered new if no identical design has been made available to the
    public before the date of filing the application for registration, or if a priority is
    claimed, the date of priority, designs shall be deemed to be identical if their specific
    features differ only in immaterial details.
(2) A design shall be deemed to have been made available to the public if it has been
    published following registration or otherwise, exhibited, used in trade or otherwise
    disclosed. It 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.
                                           Article 5
(1) A design shall be considered to have an individual character if the overall impression
    it produces on the informed user differs significantly from the overall impression
    produced on such a user by any design referred to in paragraph (2).
(2) To be considered for the purpose of application of paragraph (1) a design must be:
    (a)   commercialized in the market place, whether in the Community or elsewhere, at
          the date of the filing of the application for registration or, if a priority is claimed,
          at the date of priority; or
    (b)   published following registration as a registered Community design or a design
          right of the Member State in question, the protection of which has not expired at
          die date of filing the application or registration or, if a priority is claimed, at the
          date of priority.
(3) In order to assess individual character, common features shall as a matter of principle
    be given more weight than differences and the degree of freedom of the designer in
    developing the design shall be taken into consideration.
                                              10
 ---pagebreak---                                             Article 6
(1)  If a design for which protection is claimed under a registered design right of a Member
      State has been made available to the public by the designer or his successor in title or
     by a third person as a result of information provided or action taken by the designer or
     his successor in title or as a consequence of an abuse in relation to the designer or his
      successor in title during the twelve-month period preceding the date of tine filing of the
      application or, if a priority is claimed, the date of priority, such a disclosure shall not
      be taken into consideration for the purpose of applying Articles 4 and 5.
(2)   The provisions of paragraph (1) shall not apply if the subject of the abusive disclosure
      is a design which has resulted in a registered Community design or a registered design
     right of the Member State concerned.
                                            Article 7
(1)   A design right shall not subsist in a design to the extent that the realization of a
      technical function leaves no freedom as regards arbitrary features of appearance.
(2)   A design right shall not subsist in a design to the extent that it must necessarily be
      reproduced in its 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 assembled or
      connected with another product.
(3)   Notwithstanding paragraph (2), a design right shall under the conditions set out in
      Articles 4 and 5 subsist in a design serving the purpose of allowing simultaneous and
      infinite or multiple assembly or connection of identical or mutually interchangeable
      products within a modular system.
                                            Article 8
A design right shall not subsist in a design the exploitation or publication of which is contrary
to public policy or to the accepted principles of morality.
                                             Article 9
(1)   The scope of the protection conferred by a design right shall include any design which
      produces on the informed user a significantly similar overall impression.
(2)   In order to assess the scope of protection, common features shall as a matter of
      principle be given more weight than differences and the degree of freedom of the
      designer in developing his design shall be taken into consideration.
                                                11
 ---pagebreak---                                              Article 10
Upon registration a design which meets the requirements under Article 3(2) shall be protected
by a design right for a period of five years from the date of filing the application. The term
of protection may be renewed for periods of five years each, up to a total term of 25 years
from the date of filing.
                                             Article 11
(1)   A design is excluded from registration, or if registered may be declared invalid, only
      in the following cases:
      (a)   if the design does not fulfil the requirements under Article 3(2), or
      (b)   where its specific technical and/or interconnecting features are not eligible for
            protection under Article 7(1) or (2), or
      (c)   to the extent that its exploitation or publication is contrary to public policy or to
            accepted principles or morality, or
      (d)    if die applicant for or the holder of the design right is not entitled to it under the
            law of the Member State concerned.
(2)   A design right may also be declared invalid if a conflicting design which has been
      made available to the public after the date of die filing of the application or, if a
      priority is claimed, the date of priority, is protected from a date prior to the said date
      by a registered Community design or a design right of the Member State concerned, or
      by an application for such a right.
($)   Any Member State may provide that, by way of derogation from die preceding
      paragraphs, the grounds for refusal of registration or for invalidation in force in that
      State prior to the date on which the provisions necessary to comply with mis Directive
      enter into force, shall apply to design rights for which application has been made prior
      to mat date.
                                             Article 12
(1)   Upon registration a design right shall confer on its holder the exclusive right to use the
      design and to prevent any third party not having his consent from using a design
      included within the scope of protection of the design right. Hie aforementioned use
      shall cover, in particular, the making, offering, putting on the market or using of a
      product in which such a design is incorporated or to which it is applied, or from
      importing, exporting or stocking such a product for those purposes.
(2)   Where, under the law of a Member State, acts referred to in paragraph (1) could not be
      prohibited before the date on which the provisions necessary to comply with this
      Directive entered into force, the rights conferred by the design right may not be relied
       on to prevent continuation of such acts.
                                                 12
 ---pagebreak---                                              Article 13
(1)   The rights conferred by a design right upon registration shall not extend to:
      (a)    acts done privately and for non-commercial purposes;
      (b)    acts done for experimental purposes;
      (c)    acts of reproduction for the purposes of making citations or of teaching, provided
             that such acts are compatible with fair trade practice and do not unduly prejudice
             the normal exploitation of the design, and that mention is made of die source.
(2)   In addition, the rights conferred by a design right upon registration shall not extend to:
      (a)    the equipment on ships and aircraft registered in another country when these
             temporarily enter the territory of the Member State concerned;
      (b)    the importation in the Member State concerned of spare parts and accessories for
             the purpose of repairing such craft;
      (c)    the execution of repairs on such craft.
                                             Article 14
The rights conferred by a design right shall not be exercised against third parties who, after
three years from the first putting on the market of a product incorporating the design or to
which the design is applied, use the design under Article 12, provided that:
(a)   the product incorporating the design or to which the design is applied is a part of a
      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
(c)   the public is not misled as to the origin of the product used for the repair.
                                             Article IS
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 die design right is
incorporated or to which it is applied, when the product has been put on die market in the
Community by the holder of the design right or with his consent.
                                             Article 16
A design right may be declared invalid even after it has lapsed or has been surrendered.
                                                  13
 ---pagebreak---                                              Article 17
The provisions of this Directive shall be without prejudice to any legal provisions of the
Community or of the Member State concerned relating to unregistered design rights,
trademarks or other distinctive signs, patents and utility models, typefaces, civil liability, or
unfair competition.
                                             Article 18
(1)   Pending further harmonization of the laws of copyright of the Member States, a design
      protected by a design right registered in or for a Member State in accordance with this
      Directive shall also be eligible for protection under the law of copyright of that State
      as from the date on which the design was created or fixed in any form, irrespective of
      the number of products in which such design is intended to be incorporated or to which
      it is intended to be applied and irrespective of whether the design can be dissociated
      from the products in which it is intended to be incorporated or to which it is intended
      to be applied. The extent to which, and the conditions under which, such a protection
      is conferred, including the level of originality required, shall be determined by each
      Member State.
(2)   Pending further harmonization of the laws of copyright of the Member States, each
      Member State shall admit to the protection under its law of copyright a design protected
      by a design right registered in or for this State which fulfils the conditions required
      under such law, even if, in another Member State which is the country of origin of the
      design, the latter does not fulfil the conditions for protection under the law of copyright
      in that State.
                                             Article 19
(1)   Member States shall bring into force the laws, regulations or administrative provisions
      necessary to comply with this Directive by 31 October 1996.
      When Member States adopt these measures, these shall contain a reference to the
      Directive or shall be accompanied by such reference at die time of their official
      publication. The procedure for such reference shall be adopted by Member States.
(2)   Member States shall communicate to the Commission the provisions of national law
      which they adopt in the field governed by this Directive.
                                             Article 20
This Directive is addressed to the Member States.
Done at Brussels,
                   For the European Parliament               For the Council
                  The President                              The President
                                                 14
 ---pagebreak---                                    FINANCIAL STATEMENT
Tide
Proposal for a European Parliament and Council Directive on the legal protection of designs.
Description of the measure
Its purpose is to harmonize national design protection laws in certain respects with provisions
of the proposed Council Regulation on the Community Design.
It has no financial implications for the budget of the Community.
                                                15
 ---pagebreak---                     THE IMPACT OF THE PROPOSAL ON BUSINESS
                                (with special reference to SMEs)
1. Why is Community legislation necessary?
   To harmonize in certain respects the relevant laws of the Member States with the
   Community Design system proposed in the draft Regulation for the legal protection of
   designs.
2. Which business will be affected?
   (a)     Manufacturing businesses whose products have an appearance which embodies
           commercially valuable design features will be affected. For those preferring to
           continue to seek design protection under existing national laws, the latter will be
           made more consistent with the new Community system.
   (b)     All sizes of business would have an interest, but the national route may be
           preferred by those not seeking Community-wide protection and may therefore
           appeal more to some SMEs man to multinationals.
   (c)     There is no reason to suppose that particular geographical areas will predominate.
3. What will businesses have to do to comply with the proposal?
   No specific action will be needed. Businesses in some Member States may find that the
   criteria which a design must meet for national protection to be given will change in
   certain respects as a result of harmonization. Businesses will continue to benefit from
   cumulative protection for designs under the relevant copyright law in each Member State.
   On the other hand, it has been argued by several organizations representing small and
   medium-sized producers of automobile spare parts that, in contrast to the Commission's
   intentions, the interpretation which national offices and the courts may give to the criteria
   for individual character and novelty could lead to a lower protection threshold than
   envisaged. If this happened it could mean, it is claimed, that a large number of products
   of largely functional design with little or no aesthetic character and largely predetermined
   outward shape might fall into the scope of protection.
                                                 16
 ---pagebreak--- 4. What economic effects is the proposal likely to have?
   (a)      on employment?
   Harmonized Community design laws should stimulate the activities of designers both to
   innovate and to market more widely, with a positive impact on employment especially
   in smaller enterprises.
   These rights must be observed by third parties» such as competing manufacturers, and
   those who trade in the design-protected products of others. However, the proposal
   contains measures which aim to avoid any unduly onerous effects on SMEs trading in
   replacement parts of complex products such as motor cars.
   (b)      on investment and the creation of new businesses?
     Harmonized Community protection for designs should give businesses greater
     confidence in being able to recover their costs and will thereby encourage investment.
     It is difficult to judge exactly the impact for large manufacturing businesses where
     design may only represent one aspect of a product but industry has clearly indicated the
     importance it attaches to Community design protection. On the other hand, there should
     be an encouragement for creation of smaller businesses where the emphasis may lie in
     the design of a product. As regards enterprises who trade in design-protected products,
     there are provisions which limit to a certain extent the exercise of design rights against
     those whose business is in the replacement parts market, such as for example suppliers,
     repairers and insurers in the motorcar aftermarket. While providing protection to
     promote creation, therefore, the provisions permit a measure of competition from
     independent producers.
   (c)      on the competitive position of businesses?
   It is in the nature of protectable designs that they do not exhaust the fields of opportunity
   for other designers in a given product area, and the enhanced competitiveness which
   results from this freedom should benefit all sizes of design-creating enterprises, without
   posing a severe threat even to very small ones. Moreover, Competition will be
   encouraged in areas where designs will be made ineligible for protection - for example
   because fulfilment of a technical function leaves no design freedom, or because the
   design is constrained by the need to interconnect with another product.
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 ---pagebreak--- 5. Does the proposal contain measures to take account of the specific situation of SMEs?
The measures contained in the proposal are not directed specifically at small and medium-
sized enterprises, but these may benefit proportionately more than large firms, because the
greater simplicity and lower costs of harmonized Community design protection should be of
greater significance in SMEs. It is in some of the smaller SMEs that many of today's most
innovative and original designers may tend to concentrate.
The proposal will harmonize exclusive rights for designers and their successors in title, and
these rights must be respected by competitors. As for SMEs trading in the design-protected
products of others, it is not appropriate that industrial property law should itself contain
exemptions for specific industrial sectors. However, for the reasons given above, traders in
and manufacturers of replacement parts are given certain relief from the exercise against them
of such rights as may exist in these parts.
6. Consultation
The Commission services published a green paper "The Legal Protection of Industrial Design"
(III/F/5131/91). This was widely circulated to thousands of recipients. On the basis of a
considerable number of submissions from major industrial organizations received, interested
parties were invited to a hearing in Brussels on 25 and 26 February 1992. Reactions have
been generally very favourable, and although many detailed aspects will need discussion there
are only a few issues of difficulty to be resolved, mainly concerned with the criteria for
protectability and what kinds of design should not be eligible for protection
Some have expressed concerns that manufacture of certain functional products may be
monopolized by the existence of design rights, these allegations being based upon the absence
of a distinction between aesthetic and functional design. However, experience shows that this
distinction is largely arbitrary and that protection for functional designs needs in any case to
be provided for by some means. The design Directive makes protection dependent upon
distinctive appearance, and in view of this, these concerns should not prove to be justified
 ---pagebreak--- Some industries have expressed the view that the market for replacement parts would benefit
if protection were denied for any design constrained wholly by the need for the product
embodying it to interconnect mechanically with another product, and the proposal contains
appropriate provisions to this end. These concerns have arisen notably in the motor and
computer industries, with independent producers of replacement parts arguing against the
perceived monopoly position of the original manufacturers. ACEA(I), representing the original
motor manufacturers, argue strongly that they deserve and require design protection for certain
component parts of motor cars in order to be able tb recover their design costs, and they
consider therefore that they have made sufficient concession in accepting these provisions on
the non-protectability of a product design dictated wholly by the way it has to fit
mechanically with another product. On the other hand, EAPA 2), CLEDIPA(,), AIRCf4) and
CLEPA(5) representing the component and replacement part manufacturers, continue to argue
strongly not only against protection for those designs which must mechanically fit, but also
against protection for other designs which must visually match, the remaining parts of a
complex product such as a car. They have variously suggested solutions such as a "must-
match" exception from protection, or a legal licence provision, declaring that they are not
opposed to paying royalties, but objecting to being prohibited from manufacturing and dealing
in spare parts. Representatives of the insurance industry and consumers also argue that design
protection of such parts will raise the costs of repair work and of insurance premiums.
(,)
     ACEA: Association des Constructeurs Européens d'Automobiles.
(2)
     EAPA: European Automotive Panel Association.
(3)
     CLEDIPA: Comité de Liaison Européen de la Distribution Indépendante de Pièces de
     rechange et Equipements pour Automobiles.
(4)
     AIRC: Association Internationale des Réparateurs en Carrosserie.
(5)
     CLEPA: Comité de Liaison de la Construction d'Equipements et de Pièces
     d'Automobiles.
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                                                              COM (93) 344 final
                                                      DOCUMENTS
EN                                                                         os 06
                                 Catalogue number : CB-CO-93-410-EN-C
                                                             ISBN 92-77-58339-8
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