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

The registration of a design confers on its holder an exclusive ownership right which allows him to use it and to prevent any third party not having his consent from using it (Article 12). The directive quotes as examples: the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product …

Extent of the protection

The registration of a design confers on its holder an exclusive ownership right which allows him to use it and to prevent any third party not having his consent from using it (Article 12). The directive quotes as examples: the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. Infringement of the design right also suggests that the acts at issue are undertaken “for commercial purposes” . In effect, the directive sets as a limit to the exercise of the exclusive right “acts done privately and for non-commercial purposes” (Article 13(1)(a)). The protection of the design could therefore be subject, like for trade marks, to the territoriality principle, i.e. putting on the market within the European Union.

Since Article 12 refers to the use of a product in general without quoting the “circles specialized in the sector concerned” as in Article 6, it seems that the appearance with characterizes the design is protected as such regardless of the product to which it relates. Regulation No 6/2002 on Community designs  seems to confirm that analysis since, according to Article 36(6) of the regulation, the fact of mentioning in the application for registration the products in which the design is intended to be incorporated or to which it is intended to be applied, does not affect the scope of the protection of the design as such.

The protection against a fraudulent use includes any design which does not produce on the informed user a different overall visual impression given the degree of freedom of the designer in developing the design (Article 9). The directive sets the duration of the protection conferred by registration to five years from the date of filing of the application, which may be renewed for successive periods of five years up to a total term of 25 years (Article 10) .

The exclusive right conferred by the registration of a design obviously has limitations which are strictly defined by Article 13. In addition to acts done privately and for non-commercial purposes, the exclusive design right may, inter alia, be enforced against acts done for experimental purposes and 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 the source .

As the Member States did not reach any consensus for spare parts, in particular motor vehicle body parts, the design of a part “used for the purpose of the repair of a complex product so as to restore its original appearance” is transitionally excluded from the scope of the protection. Only the changes in national laws which pursue an objective of liberalization of the market for such parts are however admitted ('freeze plus' solution) (Article 14). As a consequence, in certain Member States, a car maker may both oppose the use of an identical part when assembling a competing new motor vehicle and its use when repairing a motor vehicle. In order to offer consumers a greater choice at a lower price when purchasing visible spare parts (bonnets, bumpers, doors, headlights, fender, screen and wings), the Commission recommends depriving Member States of the possibility to maintain protection of designs for those items. A “repairs clause” could be introduced in the directive and could establish that visible motor vehicle parts may be freely reproduced by independent spare part makers and marketed in the European Union as a whole for purposes of repair and for restoring the original appearance of the product . The fact remains, however, that designs in the auto sector are developed through the creative efforts of their designers and it is normal that where huge sums have been invested in the creation of new designs which may not be successful ultimately, their creators should be able to recover their investments and benefit from profits rewarding the risk taken by selling both the whole design and the parts required to repair it. There is currently no reason to repeal design protection, which is legitimate and practical, and which has not been shown to give rise to any negative effects on price, either in terms of absolute value or price levels, especially in view of the fact that European countries and all major industrialized countries at the global level provide design right protection to motor vehicle body parts.

Lastly, as for trade mark and patent, the rights conferred by the registration of the design are subject to the rule of exhaustion of rights . The holder of the design cannot therefore oppose acts relating to a product in which it is incorporated where it has been marketed in the European Economic Area by him or with his consent (Article 15).

See Agreement on Trade-Related Aspects of Intellectual Property Rights, attached to the Marrakech Convention establishing the WTO concluded on 15 April 1994, Annex 1 C, Article 26(1). See also Directive No 2008/95, Article 5, which subject the exercise of exclusive rights of the proprietor of the trade mark to their use "in the course of trade".

Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, OJ L 3 of 5 January 2002, 1.

This term is longer than the term laid down for the international registration of a design (five years renewable twice for the same term, without being less than fifteen years). Since the European Union joined the Geneva Act of the Hague Agreement of 2 July 1999 Concerning the International Registration of Industrial Designs, on 1 January 2008, (Council Decision No 2006/954 of 18 December 2006 and Council Regulation (EC) No 1891/2006 of 18 December 2006 amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs, OJ L 386 of 29 December 2006), the system of registration of designs in the Union is now related to the international system of registration of industrial designs of WIPO.

It cannot either be opposed to equipments on ships and aircraft registered in another country when these temporarily enter the territory of the Member State concerned, the importation in that Member State of spare parts and accessories for the purpose of repairing such craft and the execution of repairs on such craft: Directive No 98/71, Article 13(2).

Proposal for a directive of the European Parliament and of the Council amending Directive No 98/71/EC on the legal protection of designs, 14 September 2004, COM(2004)0582 final. Up to now, only Belgium, Ireland, Italy, Luxembourg, the Netherlands, Spain, the United Kingdom and Greece have introduced a 'repairs clause'.

See, for an example of application of that theory to designs: Case 144/81 Keurkoop v Nancy Kean Gifts [1982] ECR 2853, LawLex200500004094JBJ.

European Business Law

283. Extent of the protection

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283. Extent of the 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