The Commission is listening: design protection legislation to be modernized in the EU

There is a desire to reform and modernize the legal protection of Design in the EU, and in this context, the Commission has launched a public consultation. Now is an excellent opportunity to get your or your company’s voice heard regarding the functionality of the current design legislation, and to highlight the possible problems that have arisen in this field.

The Survey is specifically focused on protection offered by registered and non-registered design rights under the EU legislation, but the questionnaire also contains questions on protection under national and non-EU systems.

Why is a response to the questionnaire important? Firstly, EU legislation also affects national legislation. The matter is therefore important, even if your business is limited only to the Finnish market.

Secondly, by receiving a good number of answers from designers, it will be much easier for the EU Commission take further informed action to benefit designers. It is also worth remembering that, among other stakeholders, also manufacturers and other companies that utilize design and design rights will also be asked to reply the questionnaire, so a good volume of answers from designers is likely to create a more balanced picture of the possible strengths and weaknesses of the current EU design legislation.

Naturally, also Ornamo Art and Design Finland as a nation-wide professional designer association will also respond to the survey. The deadline for responses is until 15th April 2019.

 

Take these things into account when responding:

You do not have to reply to the entire questionnaire. You can answer only those questions which pertain to you, and of which you have some experience.

Questions 5, 10-13 and 38-60 are specifically aimed at non-designers/non-design rights holders. We recommend that you set aside about one hour to answer your questions, as there are approximately 35 questions for the designers to answer.

The questionnaire is to be completed in English, but there is no need to worry about grammar. The main thing is that the matter is clearly presented, and that the main legal terms do not get mixed up.

 

Some of the most important remarks regarding terminology

The questionnaire does not cover copyright, which is a separate intellectual property right from design rights. Copyright can, however, be brought up in some supplementary information fields in the questionnaire, if the matter is perceived to be relevant in the protection created by design rights.

A design right, i.e. the legal exclusivity for the use of a model, can be primarily obtained by registering it in the desired area. The design must be new and unique, in any case not earlier than one year before the application for registration was published. The Protection is valid for 5 years at a time and the registration can be renewed up to 4 times, so the maximum grace period is 25 years. A registration covering a design right for the whole EU area is called a registered community design.

An exception to the aforementioned: even without registering in the EU, you can be granted an unregistered community design, which is valid for 3 years from the time when the model has been sufficiently widely published in the EU. As in the case of copyright protection, the form of protection is an insecure means of protection, since it can be accompanied by difficult display issues and protection is only valid against counterfeiting. This remedy is therefore not suitable for e.g. a competitive situation, which occurs in good faith, between two companies.

 

Some further observations concerning the Survey

In particular, points 2-4 should also be clarified in the supplementary information field if a problem has been observed with the model protection system in the EU, on any general level.

Something which has occasionally surfaced in Ornamo’s consultancy work has even been an eventually tricky issue for its designer members: design no longer means only the design of objects in the 2010, but increasingly in the field of professional design, the result of the design process can be e.g. a service concept. At the same time, the legal situation is that the services as a whole are not protected by any intellectual property.

At the moment, design services and designed service concepts can be protected to some extent; protection is often established in a fragmented form, by combining innovatively different forms of protection, such as trade marks, non-disclosure agreements and other intellectual property rights, inasmuch as sensory manifestations are in question, such as audiovisual material related to the service, written material, or even audible signals. In other words, the protection is incomplete, which can lead to problems or be a challenging issue for companies seeking effective protection.

Design services are not in any direct way inside the scope of the EU design legislation at hand, but in my opinion that is not a reason not to mention it, if a designer considers it a factual problem for his/her business and intellectual property protection. If you have experienced this problem, you may refer to section 2 and/or 7, for example.

Question 31 raises an interesting dilemma: when registering a community design, the EU agency does not investigate the novelty of the model, which speeds up the process considerably, but on the other hand it can pose a risk that the model will be overturned later, at the request of a party having registered a corresponding model. This can currently, first and foremost, be prevented in a manner where the applicant or their representative ensures that the design rights are researched prior to the initiation of the registration application. Both official research and the lack of it may be considered a problem for an individual designer, depending on their individual needs.

In many respects, Question 34 is at the heart of the matter: the Commission would like to hear whether the model protection (gained through registration) is useful. This applies to both EU community design models and registrations which are made in Finland or Intl. Regions. Even here, eventual problems which are experienced are recommended to be detailed, in a more itemised manner, in the additional information field. When the problems in the system are identified accurately, they can be addressed. Lastly, also positive sides should be acknowledged. In my opinion it is easy to say, that the current system is in many ways potentially very helpful to countless European designers. To name one: the existence of a dualistic EU-wide design protection system, that provides at least a certain level of protection also to non-registered designs.