By John Richards*

In 1993, the Commission of the European Union issued proposals a directive for harmonization of design laws within the member countries of the EU and for the creation of an EU-wide design regime that would co-exist with the harmonized national design laws in a manner analogous to that in which national trademark laws co-exist with Community trademark rights. The proposal included adding a design registration function to the Community Trademark Office – officially the “Office for Harmonization of the Internal Market (Trade Marks and Designs)” – commonly referred to as OHIM. ¹

However, such plans initially fell afoul of the problem of what, if any, protection should be given to spare parts and their use in repairs, particularly for cars, this also being the main point of contention between Parliament and the Council having regard to the directive. The Council wished to have them covered. Parliament wished to include provisions that would permit the use of articles covered by a registered design to repair “complex products” as long as the source of the repair part is indelibly marked on it and fair compensation for use of the design has been offered to the right holder. There were also significant differences between national governments. Thus the adoption of a Union-wide single registration system was delayed for at least a few years. Since when adopting a directive, one can confine what is included to that on which there is agreement and leave the rest to national law, whereas this option is not open when adopting a regulation that will establish an EU-wide right, it was easier to deal wuth the directive first. When the harmonization directive was adopted in 1998² it essentially left the issue of the use of component parts for the repair of a complex product to national law until at least 2004.³

Agreement was ultimately reached on a regulation to establish an EU Design Right and this was published in the Official Journal on January 5, 2002, parts of it came into effect on March 6, 2002. The remainder comes into efect on April 1, 2003. Both the directive and the regulation are discussed below.