The EU design reform has today (18 November 2024) been published in the Official Journal of the European Union.

The reform package comprises Regulation (EU) 2024/2822 amending Council Regulation No 6/2002 on Community designs and repealing Commission Regulation No 2246/2002 and Directive (EU) 2024/2823 on the legal protection of designs.

The Regulation enters into force on the 20^th day following publication and will apply four months later.

The Directive also formally enters into force 20 days after publication. EU member states have 36 months from that date to implement the directive in their national legislation.

The MARQUES Designs Team, working closely with other IP associations, has provided input into the design reform process and continues to monitor the progress. Find out more on the Designs Team page and read the joint comments of ECTA, INTA and MARQUES on the public consultation (January 2023) here.

The Diplomatic Conference to Conclude a Design Law Treaty started yesterday (11 November) in Riyadh, Saudi Arabia.

It is expected to conclude by 22 November.

WIPO Member States chose the venue for the Diplomatic Conference at a Special Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications in October 2023.

WIPO says that about 900 delegates, observers and other stakeholders have registered to join the Diplomatic Conference.

The planned Design Law Treaty aims “to streamline the global system for protecting designs, making it easier, faster and more affordable for designers to protect their work in home markets as well as overseas”, according to WIPO.

The proposed Treaty would cover design protection procedures but not questions relating to substantive law.

The negotiations will be based on a Basic Proposal for the Design Law Treaty, which was submitted in May this year and sums up the state of the discussions which have continued over many years.

The Diplomatic Conference will be divided into two committees. The first will negotiate and agree on all substantive IP provisions and recommend them for adoption by the plenary. The second will negotiate and agree on all administrative provisions and final clauses, such as who can join the future treaty and the conditions for its entry into force.

In addition, there will be a Credentials Committee, Drafting Committee and Steering Committee.

Once all the committees have finished their work, the treaty will be sent to the conference plenary for adoption. It is then open for signature.

WIPO Director General Daren Tang said: “Design protection secures the rights of creators the world over and is a critical tool for maintaining competitive advantage, encouraging innovation and protecting businesses in a global marketplace.”

You can read more about the treaty on WIPO’s website here and watch a live stream of the Diplomatic Conference here.

The MARQUES Designs Team has submitted comments on some of the outstanding issues with the draft proposals that are of particular interest to users. These include: disclosure requirement for traditional knowledge, traditional cultural expressions and genetic resources; grace period for filing in case of disclosure; deferment of publication; restoration of a priority right; and requirement to record a licence before a licensee can join infringement proceedings or claim damages.

The Designs Team will monitor the discussions at the Diplomatic Conference and post a further report when it is finished.

The photo is taken from WIPO's X feed

The Council of the EU has adopted the revised directive on the legal protection of designs and the amended regulation on community designs.

The texts were adopted on 10 October 2024.

The directive will be published in the Official Journal of the EU and will enter into force on the 20^th day following its publication. EU Member States will then have 36 months to transpose the directive.

The regulation amending the regulation on Community designs will enter into force on the 20^th day following publication and will apply four months later.

The design reform package aims to make it easier and cheaper to register designs at the EU level and harmonise procedures between European and national systems.

It also introduces the “repair clause” to exempt from design protection the spare parts used for repair of complex products (such as spare parts for the car-repair sector) following a transitional period.

More information is available on the Council website here.

The MARQUES Designs Team, working closely with other IP associations, has provided input into the design reform process and continues to monitor the progress. Find out more on the Designs Team page and read the joint comments of ECTA, INTA and MARQUES on the public consultation (January 2023) here.

A session dedicated to design law at last week’s MARQUES Annual Conference in Stockholm focused on using disclaimers, and included a lively audience quiz.

The panel session, “You can handle visual disclaimers in designs” was chaired by Oliver Nilgen, Meissner Bolte, Germany, a member of the MARQUES Designs Team and included Laura Gisler, Aera IP, Denmark; Axel Beks, Atlas Copco, Sweden; and Silke Weiss, Senior Legal Officer, Hague Legal Affairs Section, The Hague Registry, Brands and Designs Sector, WIPO.

The panel provided tips on using disclaimers in design applications, which included:

• Clear specification of visual disclaimers in the description
• Use dotted or broken lines. Alternatively, use colouring, colour shading or shading
• Be careful with the use of blurring, circles or boundaries
• Be careful when including disclaimers for different parts of a product in the same application.

To demonstrate the tips, they asked members of the audience to identify which parts of actual designs were disclaimed base on images from the applications.

Introducing the session, Oliver said: “Design protection is relatively cheap and easy to file. The biggest enemy is the novelty requirement so your filing strategy should be carefully planned. “ He highlighted relevant decisions on disclaimers including EU General Court case T-757/22 Puma SE v EUIPO.

Silke said there is a section dealing with visual disclaimers in the administrative instructions for the Hague System. “It really depends on the product whether you want a visual disclaimer or a description,” she said, adding that registered trade marks appearing on the product should be removed or disclaimed from the design application.

The most important thing is that the examiner knows what is intended to be claimed. “The examiner does t know if it is claimed or not. It’s important to have a clear description. Be consistent across all reproductions. The examiners see every difference,” said Silke. Among the IP5 offices, there is a clear preference for using a description supplemented by broken or dotted lines.

Laura explained how registered designs can help to build value in a company, complementing patent rights. This can be important internally, for investors and for the public. “Design filings really helpful in communicating what we were about,” she said, adding: “They are one of many tools and central for protecting brand language.”

“On top of protecting R&D it’s also about the message you want to spread to customers,” said Axel. “Design rights protect against copying and convey to customers the company’s current and future look.”

Design case law

In a separate session in which speakers reviewed CJEU case law, Maarten Haak of Hoogenraad & Haak, The Netherlands, a member of the MARQUES Unfair Competition Team, and Inga George, boesling IP, Germany, Co-Chair of the MARQUES Designs Team, reviewed several design cases:

• T-647/22 Puma: In this design case, an application for an RCD was refused because it was previously disclosed by Rihanna on social media.
• Case T-537/22 Lego: The design was not purely technical. The invalidity applicant has to show lack of novelty or individual character.
• Case T-757/22 Puma v EUIPO/Road Star Group: The Court found that Puma’s designs did not produce the same overall impression as that produced by an RCD application for a trainer. It said that “the disclaimed features of the earlier designs … could be taken into account in order to assess the individual character of the contested design.”

The MARQUES Annual Conference took place in Stockholm last week and further reports are on the Class 46 blog. Next year’s Annual Conference is in The Hague from 16 to 19 September 2025.

The MARQUES Design Tracker has been updated with information on China, Hong Kong and Sweden.

The Design Tracker is an online tool that provides an overview of the filing requirements for national filings or International filings using the Hague System. The information can be accessed by clicking on a world map.

It covers key questions on design protection in 24 jurisdictions. The questions were selected by members of the MARQUES Designs Team and the answers submitted by experts in each jurisdiction.

The contributions on China, Hong Kong and Sweden are by Ai-Leen Lim, Susan Cheung, Xiofan Cheung and Sara Söderling of AWA.

You can access the Design Tracker on the MARQUES website here.

If you have any questions about the Design Tracker, please contact a member of the Designs Team.

EUIPO is hosting a webinar on “Transatlantic IP; the United States perspective on design patents for EU business” on Tuesday 18 June from 15:00 to 16:00 CEST.

The webinar is part of EUIPO’s series of Tuesday webinars and features Marianna Kondas of the EUIPO Institutional and Cooperation Department and Courtney Stopp of the USPTO.

EUIPO says that the EU and US are key geopolitical and trading partners and trade figures are at historical highs.

“Design rights are increasingly used by businesses on both side of the Atlantic to protect the appearance of products and thus secure a competitive advantage,” it adds.

The webinar will provide an overview of design protection in the US compared to the EU focused on the following questions:

• What are the design patent rights that can be registered at the USPTO?
• What are the main requirements of filing a design and what are the main differences with the EU system?
• How can you overcome office objections?
• Why is representation in the different jurisdictions important and what is the role of representatives in the US and the EU?

The webinar is aimed at EU and US businesses looking to protect their design portfolios at the USPTO and EUIPO and their representatives.

It is free to attend and you can register on EUIPO’s website here.

Earlier this month, EUIPO announced that DesignView’s Image Search now includes designs from all EU national and regional IP offices. This is designed to make it easier to find visually similar designs, improving user experience and efficiency.

The DesignView database has nearly 22 million designs from the EU and beyond. The Image Search feature was introduced in June 2023 and initially included RCDs.

Images can be uploaded or dropped into the search in jpg, png, gif or tiff formats.

Picture taken from DesignView website