European Business Law, the fourth volume in our series, shows how the European authorities simultaneously abolish all restrictions on access to and exercise of economic activities and support the growth of domestic markets, through the harmonization the internal legislation or the enactment of genuinely unified regulations.

European Business Law

Under Directive No 98/71, to benefit from protection, a design must be new and have an individual character (Article 3) and not be contrary to public policy or to accepted principles of morality (Article 8).
Novelty suggests that, on the date of filing of the application for registration or, if priority is claimed, the date of priority, no identical design - i.e. the features of which differ only  …

Conditions for protection

Under Directive No 98/71, to benefit from protection, a design must be new and have an individual character (Article 3) and not be contrary to public policy or to accepted principles of morality (Article 8).

Novelty suggests that, on the date of filing of the application for registration or, if priority is claimed, the date of priority, no identical design - i.e. the features of which differ only in immaterial details - has been made available to the public (Article 4). Novelty is an objective and absolute condition. It is distinguished from the requirement that a copyright be original. Designs do not materialize the formalization of an original idea but that of an idea not made available to the public yet . The mere fact that the design is being made available may therefore destroy the novelty and cause the creator to lose the benefit of protection. However, where a design is also original, its creator may, despite the availability, benefit from protection under copyright law in accordance with the principle of cumulation accepted by the directive (recital 8). However, such a cumulation of protection must not affect the respective purpose and effectiveness of these two schemes, so that it can only be envisaged if the designs can be classified as works . This possibility of cumulation largely deprives of interest the protection specific to designs since, in the system of literary and artistic property, the exercise of the infringement action is independent of any filing and the duration of protection is longer (70 years after the death instead of 25 years).

The individual character of a design depends on the overall impression it produces on the informed user, which must differ from the overall impression produced on such a user by any design which was made available to the public before (Article 5). When applying for registration, the comparison with any design made available before should underline the existence of a clear difference of overall impression produced on the informed user . Account is taken of the nature of the product to which the design is applied or in which it is incorporated in the industrial sector to which it belongs  and the degree of freedom of the designer in developing the design . The more limited the freedom of the designer is in developing his design due to technical or marketing constraints, the more weight has to be given to small differences or variations as constituting an independent development .

The protection conferred by the registration of a design is excluded in certain cases. Article 7(1) of the directive thus provides that a design right does not subsist in features of appearance of a product which are solely dictated by its technical function. Evidence of the exclusively functional character is on the person relying on it. Likewise, in order to facilitate the interoperability of products of different makes and, particularly, competition on the spare parts market (recital 14), protection is excluded for interconnection designs. Registration therefore does not protect the features of appearance of the product which must necessarily be reproduced in their 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 connected to or placed in, around or against another product so that either product may perform its function (Article 7(2)), except however for modular systems (Article 7(3)). The mechanical fittings of modular products used to assembly are protected (e.g.: nesting system for Lego bricks) since they constitute “an important element of the innovative characteristics of modular products and present a major marketing asset” (recital 15). 

There is disclosure where a design has been published following registration, exhibited, used in trade or otherwise disclosed. The making available to the public of the design of a product taken as a  whole entails the making available of the design of part of that  product if the appearance of that part is clearly identifiable when it  is made available . However, disclosure does not remove novelty: (i) where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Union, before the date of filing of the application for registration or, if priority is claimed, the date of priority; (ii) where it is disclosed to a third person under explicit or implicit conditions of confidentiality or (iii) where it is made available to the public as a consequence of an abuse in relation to the designer or his successor in title (Article 6(1)) . Furthermore, a designer, his successor in title or a third person as a result of information provided or action taken by the designer, or his successor in title, have a 12-month grace period preceding the date of filing of the application or, if priority is claimed, the date of priority (Article 6(2)), during which they may test the product on the market before contemplating its possible registration. Upon expiry of that period, they may enjoy the protection conferred by Regulation No 6/2002 to unregistered Community design for two more years. In any event, designs which entered the public domain before the transposition of Directive No 98/71 benefit, at the time of its entry into force, from a new protection under the copyright, if the conditions for being awarded that protection are fulfilled, for the whole duration laid down in Directive No 93/98 .

Lastly, where a design is applied to or incorporated in a product which constitutes a component part of a complex product, it is new and has an individual character only if it remains visible during normal use of the product, to the extent that the visible features also fulfill the requirements as to novelty and individual character (Article 3(3)). “Normal” use means use by the end user, excluding maintenance, servicing or repair work (Article 3(4)). A “complex” product is defined as a product which is composed of multiple components which can be replaced permitting disassembly and reassembly of the product (Article 1(c)). The purpose of this condition is in fact to exclude from the scope of protection any spare parts which are under vehicle bonnet, in order to enable component and motor vehicle manufacturers to copy the original parts and to offer competing spare parts. Visible spare parts may, as for them, be reproduced by independent manufacturers provided that they pay a “fair and reasonable” remuneration to the motor vehicle manufacturer .

A design may be new without being original: it may thus combined known elements belonging to the public domain.

Case C-683/17 Cofemel - Sociedade de Vestuário SA, Judgment of 12 September 2019, LawLex202100004943JBJ.

For the concept of informed user, see, in a ruling based on Regulation No 6/2002, Case T-337/12 El Hogar Perfecto del Siglo XXI, Judgment of 21 November 2013, LawLex201300001626JBJ, classifies as an informed user a user who is particularly observant, either because of his personal experience or because of his extensive knowledge of the sector in question, whether an individual or a professional.

Directive No 98/71, recital 13. See also Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, recital 14 identically drafted.

EC Commission, Green Paper on the Legal Protection of Industrial designs, June 1991.

Case C-123/20 Ferrari SpA v Mansory Design & Holding GmbH, 28 October 2021, LawLex202100005713JBJ, which specifies that where the act of making available consists of the publication of images of a product, the features of the part or component of that product in respect of which the design at issue is claimed must be clearly visible.

The 1883 Paris Convention confers on any person who has filed an application for registration of an industrial design in one of the countries of the Union a right of priority of six months for the purpose of filing in the other countries (Article 4( A)(1) and (C)(1)).

Case C-168/09 Flos SpA v Semeraro, Judgment of 27 January 2011, LawLex201100000458JBJ.

See COM(96) 66 final of 21 February 1996, amended proposal for a directive to harmonize Member States' legislation on the protection of industrial design and models, which contemplates the special case of spare parts for motor vehicles.

European Business Law

281. Conditions for protection

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Les décisions de justice citées dans ce paragraphe :

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281. Conditions for protection

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise