Industrial design gets “redesigned”

In recent months, the long-awaited legislative reform of the European Union regarding designs and models has been a hot topic, and even more so after its publication on November 18 in the Official Journal of the European Union.

However, other important events affecting industrial designs worldwide also deserve attention but have gone largely unnoticed. These include changes to international industrial designs (Hague System), the new Riyadh Treaty on design law and the Locarno Classification.

EU Designs

Regarding the EU Design Reform, which we previously addressed in an earlier article, it started to take shape a few years ago and was definitively launched in 2022 following consultations by the European Commission with key stakeholders. This process has resulted in new regulations that address critical issues, such as:

• Adaptation to the digital age for graphic representation.
• Increased legal certainty.
• Modernization and simplification of procedures.
• Establishment of a new fee system.

First, this reform entails the end of the old terminology for referring to designs, transitioning from “Community Designs” to “Registered EU Designs (REUD)” and “Unregistered EU Designs (UEUD).”

Additionally, the symbol Ⓓ has been introduced, allowing EU design holders to inform the public that their design is protected, for example, by marking a product with this symbol.

Beyond a mere “rebranding,” the reform introduces significant substantive changes, such as expanding the definition of design to include not only physical designs but also those existing exclusively in digital or virtual environments.

Furthermore, a “repair clause” has been introduced, allowing manufacturers of spare parts to market these without infringing design rights if the parts are meant to restore a product’s original appearance. Design holders are also granted protection against counterfeits that are merely in transit and not intended for the EU market. Additionally, for unregistered designs, the circumstances under which a design can be considered “publicly disclosed” are clarified, offering greater legal certainty for holders.

Practical changes include limiting applications to 50 designs per submission and removing the requirement for class unity. This means that a single application can include products like a mobile phone and its packaging or even entirely different items, such as a phone and a car model.

However, this could lead to complications when extending EU design applications to countries with stricter rules about what can be grouped within a multiple design application.

Key dates for the reform are as follows:

• Entry into force: December 8, 2024.
• Application of the regulation: In two phases, the first general phase starting May 1, 2025, and a second phase covering specific aspects on July 1, 2026.
• Transposition of the Directive into national legislations: Member States have until December 2027 to comply.

International Industrial Designs (Hague System)

The Hague System of WIPO, which Spain has been a contracting party to since its inception in 1925, allows for simultaneous protection of industrial designs across multiple countries or regions through a single international application and fee.

This system, currently comprising nearly 100 contracting states, decided on July 17, 2024, during its 44th session, to suspend the application of the Hague Act (1960) effective January 1, 2025. From that date, the system will exclusively apply the Geneva Act (1999). Consequently, only applications and designations under the Geneva Act will be possible, although renewals and modifications for existing Hague Act (1960) designations will still be allowed.

Meanwhile, WIPO member states have adopted the Riyadh Treaty on Design Law (DLT). Approved at a diplomatic conference on November 22, 2024, this treaty aims to make it easier, faster and more affordable for designers worldwide to protect their work, fostering international collaboration in design. It will enter into force after at least 15 contracting parties sign it.

The DLT, akin to the Patent Law Treaty (PLT), seeks to harmonize design laws and make protection procedures less complex and more accessible. Key aspects include:

• Defining a maximum list of indications or elements applicants must submit with an application.
• Allowing applicants to choose the format of their application: drawings, photographs, or, where accepted, video files.
• Allowing multiple designs in a single application under certain conditions.
• Setting requirements for granting a filing date.
• Providing a grace period of six or 12 months after initial disclosure without affecting novelty.
• Allowing publication deferrals of at least six months.
• Providing remedies for missed deadlines.
• Simplifying renewal processes.
• Encouraging electronic filing systems and priority document exchanges.

During the conference, it was highlighted that this treaty opens new avenues for member states and establishes vital legal frameworks to benefit designers and drive global innovation and creativity.

Lastly, within the Hague System, a new edition of the Locarno Classification will take effect on January 1, 2025. This 15th edition will apply to international applications submitted on or after that date.

As demonstrated by all these developments, the industrial design landscape is undergoing significant transformations. To ensure optimal protection for your creations, specialized legal advice is essential. At Herrero & Asociados, we offer comprehensive services in industrial property, helping you navigate these changes and make the best decisions for your business. Contact us!