Under EU law, “directives” are issued, today usually by the European Council and Parliament acting jointly, to “direct” the member states of the EU to bring their laws into conformity with what has been adopted by the EU. “Regulations” on the contrary are directly applicable. Some, nowadays normally issued by the Council or the Council and Parliament acting jointly, are effectively primary legislation. Others, typically issued by the Commission are in the form of secondary legislation aimed at implementing primary legislation adopted by the Council and Parliament.

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Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (hereinafter referred to as the “Directive”).

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Directive Articles 14 and 18. Article 14 confines the rights of countries to amend their national laws on the spare parts issue to amendments whose “purpose is to liberalize the market for such parts.”

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Directive, Article 16. Article 17 specifically provides that questions of whether there can be dual protection for the same design under a design protection law and copyright is to remain a matter for national law.

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Directive Article 7(1).

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Directive Article 7(2).

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Directive Article 1:

‘design’ means the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation;

‘product’ means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs.

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Directive Article 3.

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Directive, Article 6(1).

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Directive, Article 6(2).

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Directive, Article 4.

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Directive, Article 5.

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Directive, Article 10.

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Article 12. The Article includes a provision to permit continuation of acts that were lawful prior to the amendment of national law to comply with the directive even if they become unlawful after the directive is implemented.

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Directive, Article 15.

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Directive, Article 13.

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Article 11(1)(c).

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Council Regulation (EC) 6/2002 (hereinafter referred to as the Council Regulation).

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Commission Regulation (EC) 2245/2002 of October 21, 2002 (hereinafter referred to as the “Commission Regulation”)

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Council Design Regulation Article 12.

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Council Design Regulation Article 11. It has been hypothesized that the actual disclosure need not be in the EU if it has the effect of making the design available to the public in the EU, for example at a trade show outside the EU which large numbers of interested parties from the EU attend.. It remains to be seen whether the courts take this view.

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Council Design Regulation Recitals 15 and 16.

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Council Design Regulation Article 19.

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Design Regulation Article 96, it being specifically required that “a design protected by a Community design shall also be eligible for protection under the law of copyright of Member States, recital 32 specifically noting that “in the absence of complete harmonization of copyright law, it is important to establish the principle of cumulation of protection under the Community design and under copyright laws …”. This apparently means that there will for example be two separate unregistered rights in existence tin the United Kingdom: the UK right with a term of ten years from first sale, but only if the design is owned by a “qualified person” and the EU right for a period of three years open to everybody.

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Council Design Regulation Article 3.

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Council Design Regulation Article 4(2)

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Council Design Regulation Recital 13, after noting that the Commission was given a period of three years after the implementation of the Design Directive to provide a recommendation on how to solve the “spare parts” issue which delayed the implementation of both the Design Regulation and the design Directive, addresses the issue in the following terms

Under these circumstances, it is appropriate not to confer any protection as a Community design for a design which is applied to or incorporated in a product which constitutes a component part of a complex product upon whose appearance the design is dependant and which is used for the purpose of repair of a complex product so as to restore its original appearance, until the Council has decided its policy on the issue on the basis of a Commission proposal.

This is implemented in Article 110 which states

Until such time as amendments to this Regulation enter into force…, protection as a Community design shall not exist for a design which constitutes a component part of a complex product … for the purpose of the repair of a complex product so as to restore its original appearance.

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Council Design Regulation Article 4(1).

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This provision was apparently included to enable designers in crowded fields, such as textiles, to obtain protection for designs that might have relatively small differences from the prior art as well as to take account of issues relating from technical requirements for the products.

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Council Design Regulation Article 9.

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Council Design Regulation Article 41 provides for a six month priority period from applications filed in a Paris Convention or World Trade Organization country on normal Paris Convention terms. Council Regulation Article 44 provides for a six month period in which priority may be claimed from an official or officially recognized exhibition falling within the terms of the Convention on International Exhibitions. When exhibition priority is claimed, the applicant has three months from filing to file a certificate from “the authority responsible for the protection of industrial property at the exhibition” certifying that the design was incorporated in or applied to a product disclosed at the exhibition and the date on which the product was first disclosed. Commission Regulation Article 9.

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Council Design Regulation Articles 5 and 6.

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Council Design Regulation Article 7.

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Council Design Regulation Article 10. This definition focusing on overall impression has caused some concern about the scope of protection of the unregistered right since in this case, it may be difficult to focus the court on individual features of design, whivh in the case of a registered right might themselves for the subject of individual registrations.

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Council Design Regulation Article 19(2)

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Council Design Regulation Article 35

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Council Design Regulation Article 98

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Council Design Regulation Article 36

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Current thinking is to allow up to 100 designs in such a multiple application, possibly providing a way to deal with the problem of what to do about component parts in a single article.

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Council Design Regulation Article 37

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Commission Regulation Articles 66 and 67.

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Council Design Regulation Article 47

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Council Design Regulation Article 67.

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Commission Design Regulation Article 59

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Commission Design Regulation Article 48.

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Council Design Regulation Articles 48 and 49.

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Design Regulation Articles 50 and 74(2). The reason for providing for deferred publication is given in Recital 26 as being that

The normal publication following registration of a Community design could in some cases destroy or jeopardise the success of a commercial operation involving the design. The facility of a deferment of publication for a reasonable period affords a solution in such cases.

It is understood that this provision is regarded as being particularly important by fabric designers.

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Council Regulation Article 24.

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Council Regulation Article 25.

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Commission Regulation Articles 28 to 33 and includes provisions permitting an infringer to participate in such proceedings, the possibility of awarding costs, and the languages to be used. The requirements for oral proceedings and the possible use of an expert by OHIM are set out in the Commission Regulation Articles 42 – 46..Extensions of time may be possible as long as consent is obtained form any other party to the proceedings.(Commission Regulation Article 57(2)

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Council Regulation 6/2002 Article 55.

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Council Regulation Article 61. Although the regulation refers to the European Court of Justice, in practice it seems that appeals must initially be brought before the European Court of First Instance under the provisions of Article 225 of the Treaty Establishing the European Community (formerly known as the Treaty of Rome). A further appeal may lie to the European Court of Justice itself. See Procter& Gamble Company v. OHIM [2002] ETMR 22.

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See Communication No 10/02 of the President of OHIM of 28 June 2002 concerning professional representation in the framework of the Community Design Regulation

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Commission Regulation Article 62.

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Council Design Regulation Articles 12 and 13.

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Commission Regulation Article 24.

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Commission Regulation Article 27.

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Council Regulation Article 29.

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Council Regulation Article 30.

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Council Regulation Article 31. It seems, however, that this can only be done whaen an action has been brought before the courts of an EU state in which the “center of the debtor’s main interests is situated”.

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Council Design Regulation Articles 20, 21 and 22. The prior user right is personal, confined to the purpose for which the use had been effected or for which the preparations were made, does not permit the granting of licenses and is transferable only with the business or part of the business in connection with which the prior use occurred or the preparations were made.

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Council Design Regulation Article 82 provides that if the defendant is domiciled or resident in a member sate, the action shall normally be brought before the Community Design Court (CDC) in that country, if this is not the case and the defendant has an “establishment’ in member state then tin the CDC in that country, if none of these apply then jurisdiction is in the CDC in country in which the plaintiff is domiciled, resident or established and if none of these apply, in the CDC in Spain. An additional option is to bring the action in the court of the country in which the infringement occurred. Under Article 90, provisional relief may be requested of any court in a member state, but the relief may be confined to what is available under national law.

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Design Regulation Articles 24, 80 and 81.

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Design Regulation Article 95.

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This provision was apparently included to enable designers in crowded fields, such as textiles, to obtain protection for designs that might have relatively small differences from the prior art as well as to take account of issues relating from technical requirements for the products. But also applies to determining infringement.

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