The EU Design is a system of protection for designs in the entire European Union.
The registration procedure of the EU Design, is organized under the responsibility of the European Union Intellectual Property Office (EUIPO) located in Alicante, Spain, which is also responsible for the EU trademark system.
There are two types of EU Designs:
In both cases, the EU Design has a unitary character: it is registered (in the case of a EUD), transferred, cancelled, surrendered or declared invalid for the entire European Union. Likewise, a decision on infringement of a EU Design has effect in the entire European Union such that one single infringement action allows the plaintiff to obtain an injunction enforceable in all of the EU Member States.
Nevertheless, cumulative protection is allowed, and the same design may be protected by national copyright law and by national design law as well as by a EU Design (registered or not).
The EU Design law defines not only the conditions for protection of designs, but also the registration and cancellation procedures. It also establishes the judicial procedure in case of infringement of a EU Design.
According to the EU Design law, it is possible to protect by a EU Design, the general appearance of any industrial or handicraft item produced by its contours, colors, shapes, textures as well as the material of which it is made or its decoration. Further, packaging, graphic symbols and typographic typefaces may also be protected as well as movements, transitions or any other sort of animation, only excluding computer programs.
Only the designer himself or his successor in title is entitled to the protection of a EU Design, whether or not registered.
It is also possible for numerous designers to own jointly the right to a single EU Design. In such a case, the exercise of the rights shall be governed by contractual agreement between the co-owners, or in the absence of such a contract, by the law of the Member State in which the rights are exercised.
An employer has the right to the EU Design if the design has been developed by an employee as part of his professional duties, unless otherwise provided by contract. Consequently, a license or assignment agreement is necessary for the use of a EU Design by a company if the designer was not an employee of such a company. The holder of a registered EU Design, however, is assumed to be entitled to the rights thereto.
There is no requirements concerning the applicant’s nationality or domicile. Thus, EU Design protection is available to creators in all countries of the world.
The following three conditions are required for a valid EU Design, whether or not registered:
Furthermore, a part of a complex product may be eligible for protection as a EU Design if (i) it is visible during normal use of the product, i.e., other than during maintenance reparation of the product, and (ii) it fulfills the requirements of novelty and individual character.
Novelty of the design
A design is considered to be new if no identical design has been made available to the public before the filing or priority date in the case of a registered EU Design and before the first publication in the case of an unregistered EU Design.
For determining novelty of a registered EU Design, a priority date may be taken into consideration when the same applicant has filed a prior design or even a prior utility model in another country, Member of the Paris Union Convention. The unregistered EU Design can not benefit of such a priority.
For determining novelty, designs shall be deemed identical if their features differ in only immaterial details. Thus, novelty has a strict definition.
In addition, novelty must be absolute, meaning that any publication or disclosure of an identical design anywhere in the world by any means whatsoever will result in a lack of novelty of a subsequent EU Design. This holds true even if the publication or disclosure is by the designer himself or his successor in title.
In this later case, however, a grace period of twelve months is provided during which any disclosure made by the designer himself or his successor in title does not destroy the novelty of a registered EU Design. This twelve-month period is calculated as of the date of filing of the application or the date of priority The same applies if the design was made available to the public as a consequence of an abuse in relation to the designer or his successor in title. The grace period does obviously not apply in the case of an unregistered design for which protection begins with the first publication or disclosure.
The absolute nature of the novelty requirement is slightly diluted, by the fact that a design will not be considered to have been made available to the public if the disclosure of the design “could not reasonably have become known in the normal course of business to groups specialized in the sector concerned, operating within the EU."
Consequently, while the novelty requirement appears to be an absolute requirement, this shows that it should in fact be viewed through the eyes of the so-called “specialized groups” within the EU.
Individual character of the EU Design
An EU Design is considered to have an individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design previously made available to the public.
The date to be taken into consideration is the first date of publication in the case of an unregistered EU Design and the date of filing or priority in the case of a registered EU Design.
The determination of the individual character requires the Courts to define the characteristics of a so-called "informed user". This definition differs depending on the field of use of the design in question.
Furthermore, the Courts should, in assessing individual character, take into consideration "the degree of freedom of the designer in developing the design." As a result of this provision, the Courts should consider the originality of the design while taking into account the freedom of the designer.
The technical function of the EU Design
The EU Design must not be dictated solely by its technical function. EU Design protection is not accorded to parts which are not visible and which must be exactly reproduced in their forms and dimensions to be assembled together into a final product.
Nevertheless, an EU Design may validly protect a “complex product” that is a product composed of multiple components which can be replaced, permitting disassembly and reassembly of the product.
Thus, if the technical function is directly linked to the product’s appearance, it may not be protected by an EU Design. In such case, the only means of protection is by a patent. This is certainly the case when a specific shape leads to a technical effect, the technical effect being inseparable from the shape of the product.
The application for a registered EU Design must be filed at the EUIPO, located in Alicante.
The application must contain:
Several designs may be combined into one multiple application with a maximum of 50 different designs.
Within six months of the date of filing a design application in a State party to the Paris Union Convention or member of the World Trade Organization, the applicant may claim the priority of this first filing date for its EU Design application.
Formal examination of the EU Designs
The EUIPO examines formal requirements, giving the applicant the possibility to remedy certain deficiencies. The Office also examines whether the design application fulfills the requirement that the features for which protection is sought effectively define the appearance of all or part of the design.
The Office does not examine, however, whether the design is novel, has an individual character or whether the features of the design have a solely technical function. The registration procedure is thus primarily formal and does not include a full substantive examination of the conditions of protection.
Publication and registration of the design
The EUIPO, after the formal examination mentioned above, registers the design and, upon registration, publish the registered EU Design. The applicant may request, however, when filing the application that the publication of the registered EU Design be deferred for a period of maximum thirty months from the date of filing or the date of priority. An applicant may withdraw the application no later than three months before the end of the 30 months deferral, thus avoiding any publication of the applied design registration.
In case of a multiple design application, the applicant may thus obtain the publication of only some of the designs covered by the application, while withdrawing the others.
Duration of the design protection
A registered EU Design may be protected for a maximum of 25 years. The initial term of protection is 5 years, which may be renewed by four consecutive five-year periods.
The period of protection for an unregistered EU Design is 3 years as from the first publication.
The validity of an unregistered EU Design can only be challenged before a competent national court.
A declaration of invalidity for a registered EU Design, however, may be filed with the EUIPO.
The action for declaration of invalidity before the EUIPO
Any interested party may bring an action for a declaration of invalidity of a registered EU Design before the EUIPO. In order to commence such an action, a written statement setting forth the basis for the request for invalidity must be filed with the EUIPO.
If the EUIPO deems that such action is admissible, it may declare a registered EU Design to be invalid on the following grounds:
The invalidity of the EU Design may be pronounced for all or part of the design. In case of a decision declaring the partial invalidity of a EU Design, the protection will be maintained for the modified design.
The invalidity of the EU Design is a written procedure in which the parties are invited to present their arguments and file observations.
The procedure may be accelerated when the holder of the registered EU Design does not contest the grounds of invalidity or the relief sought.
If the procedure is not accelerated, the parties may request an oral hearing, although this is in the discretion of the EUIPO.
After publication of the declaration of invalidity of the EU Design, the effects of the invalidity shall extend to the entire European Union.
Normally, the losing party bears all of the costs of the invalidity procedure. In cases where each party succeeds on some and fails on other counts, however, the Office may reapportion the costs at its discretion based on general principles of equity.
Appeal of the decision
The EUIPO’s decisions may be appealed before the EUIPO Boards of Appeal, which decide on the merits on the appeal. The Boards of Appeal may render a final decision or remit the case for further prosecution to the examination department of the EUIPO. The EUIPO is bound by any decision taken by the Boards of Appeal.
A written notice of appeal must be filed, and the official appeal fee must be paid, within the two-month period following the notification of the contested decision.
The parties to the proceedings must file a written reasoned statement setting out the grounds of appeal within four months and are invited by the Boards of Appeal to file observations as often as it deems necessary.
The Court of Justice
An appeal contesting a decision of the EUIPO Boards of Appeal may be brought before the European Court of Justice within the two-month period following the date of the notification of the Boards of Appeal’s decision.
The Court of Justice has jurisdiction to annul or alter the contested decision as well as to determine whether any procedural requirements were violated. The EUIPO must take all the necessary measures to comply with the Court of Justice’s decision.
Rights conferred
The protection conferred by the registered or unregistered EU Design includes any design for which the overall impression produced on the informed user, considering the "degree of freedom" of the designer, is the same as that produced by the protected design.
This definition a contrario of individual character means that the holder of a EU Design may defend himself in an infringement action by asserting that his EU Design, which is presumed valid and therefore to have individual character, must consequently produce a different overall impression from all earlier designs, including that upon which the infringement action is based, and therefore not fall within the scope of protection. Only a decision of the EUIPO invalidating the allegedly infringing design could change this situation.
Other than in the particular circumstances described above, a registered EU Design grants to its holder an exclusive right allowing him to prevent any use of his design by any unauthorized third party. The holder of a registered design may also prevent any third party from introducing, in the course of trade and without their authorization, counterfeit goods in transit, regardless of whether they originate in or are intended for sale in the European Union.
The holder of a registered design may also prohibit the creation, downloading, copying, sharing or distribution, to third parties, without his consent, of any support or software recording the protected design, when it is intended to enable the reproduction of a product incorporating or applying this design.
The holder of an unregistered EU Design may only forbid the use of a copy of the protected design. This does not include, for example, an independent work of creation by a designer who is considered not to have knowledge of the prior unregistered design.
Limits of the protection
The holder of a prior registered EU Design may not enforce the rights conferred by the registration of the design against acts carried out in order to identify or refer to a product as being that of the design holder as well as against acts carried out for the purposes of comment, criticism or parody.
Only features visible in the application for registration shall be protected, even if they are not visible when the design is used.
In addition, according to a so called “reparation clause”, spare parts are excluded from design protection (whether by a registered or unregistered EU Design) when they are used solely to enable the repair of a complex product (such as a vehicle), with the aim of restoring its original appearance.
Nevertheless, the manufacturer or seller of such a spare part for a complex product may only invoke this clause if he has previously informed consumers of the commercial origin and identity of the spare part intended for the repair of the complex product.
Design Infringement proceedings
The national law in force in the Member State in which the action is brought applies.
The EU Member States have designated a certain limited number of courts that are responsible for EU Design infringement actions.
These courts have an exclusive jurisdiction for the following actions:
-*- The place of the defendant’s domicile or registered office
The competent court is the national court in which the defendant is domiciled or has an establishment.
If the alleged infringing party is not domiciled and does not have an establishment in a Member State, the competent court will be that where the plaintiff is domiciled or has an establishment.
If neither the defendant nor the plaintiff is domiciled or has an establishment in a Member State, the proceedings shall be brought in the court of Spain, where the EUIPO is located.
In all cases, the judgement is valid and may be enforced in all of the Member States of the European Union.
-*- The place of the infringing act
An action may also be brought in the court located in the place where the infringing acts took place. In this case, however, the judgement is only valid and may only be enforced within the jurisdiction of such court.
In an infringement action, the registered EU Design is presumed to be valid.
The same applies to the unregistered EU Design if its holder can prove the individual character of the design.
The alleged infringing party may bring a counterclaim requesting the invalidity of the EU Design. If such counterclaim is based on a prior design, copyright or trademark, however, the party must be the holder of such prior right.
In addition, in a case of a counterclaim for a declaration of invalidity of a registered EU Design, the court may oblige the alleged infringing party, upon request of the plaintiff, to bring the action before the EUIPO. Thus, the holder of the registered EU Design, the plaintiff, may decide whether the court or the EUIPO will judge the validity of the design.
However, only the Court can decide on invalidity of a non registered EU Design.
After the court has held that the acts constituted an infringement of the EU Design, it may issue an order to cease all infringing acts and/or to seize of the infringing goods and may also order the payment of damages or other remedies. It may also issue a preliminary injunction or other preliminary measures available under its national legislation prior to passing on the merits of the case.
The decisions of the lower court may be the subject of an appeal before a Court of appeal, which decisions may be the subject of a further appeal before the national Supreme Court, the national law determining the conditions of those proceedings.
A designer domiciled outside the EU should rely mainly on the registered EU Design since the non registered EU Design requires that the first divulgation occurs on the territory of the European Union.
BRDA - May 2025
RLDI - September 2024
Dalloz IP/IT - July 2024