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Legal Review on Industrial Design Protection in Europe

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Legal Review on Industrial Design Protection in Europe Legal review on industrial design protection in Europe Under the contract with the Directorate General Internal Market, Industry, Entrepreneurship and SMEs (MARKT2014/083/D) Legal review on industrial design protection in Europe Final Report - 15 April 2016 EN This study was carried out for the European Commission by For further information on this report, please contact: Mr. Jos Dumortier time.lex - information & technology law 35 rue du Congrès B-1000 Brussels - Belgium M: +32 477 33 82 96 [email protected] www.timelex.eu DISCLAIMER The information and views set out in this report are those of the authors and do not necessarily reflect the official opinion of the Commission. The Commission does not guarantee the accuracy of the data included in this study. Neither the Commission nor any person acting on the Commission’s behalf may be held responsible for the use which may be made of the information contained therein. 2 EUROPEAN COMMISSION Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs Unit: GROW-F5 – Intellectual Poperty abd Fight against Counterfeiting Contact: Tomás Eichenberg E-mail: [email protected] European Commission B-1049 Brussels 3 EUROPEAN COMMISSION Legal review on industrial design protection in Europe 4 EUROPEAN COMMISSION Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs Unit: GROW-F5 – Intellectual Poperty abd Fight against Counterfeiting 2016 5 Europe Direct is a service to help you find answers to your questions about the European Union. Freephone number (*): 00 800 6 7 8 9 10 11 (*) The information given is free, as are most calls (though some operators, phone boxes or hotels may charge you). LEGAL NOTICE This document has been prepared for the European Commission however it reflects the views only of the authors, and the Commission cannot be held responsible for any use which may be made of the information contained therein. More information on the European Union is available on the Internet (http://www.europa.eu). Luxembourg: Publications Office of the European Union, 2016 ISBN 978-92-79-58880-8 doi: 10.2873/630380 © European Union, 2016 Reproduction is authorised provided the source is acknowledged. 6 EUROPEAN COMMISSION Contents 1. Introduction ............................................................................................................... 17 1.1 Purpose of the study ............................................................................................... 17 1.2 Methodology applied ............................................................................................... 18 1.2.1 Inception ........................................................................................................... 18 1.2.2 Desk research ................................................................................................... 20 1.2.3 Stakeholder surveys and interviews ............................................................... 20 1.2.4 Conclusions and recommendations ............................................................... 21 1.3 Analytical Framework, Literature Review, and Terminology ................................ 22 1.3.1 Analytical Framework ....................................................................................... 22 1.3.2 Literature review ............................................................................................... 22 1.3.3 Terminology used in this report ...................................................................... 23 2. Genesis of the current EU legal and institutional framework ................................. 24 2.1 Community design rationale .................................................................................. 24 2.2 Current EU legal framework ................................................................................... 25 2.3 Current EU and national institutional frameworks ................................................ 26 2.3.1 National registration fees ................................................................................. 26 2.3.2 Litigation/Enforcement Costs .......................................................................... 28 2.3.3 SMEs and transactional costs within national systems ................................ 29 2.3.4 Ease of filing ..................................................................................................... 31 2.3.5 National filing trends ........................................................................................ 32 2.3.6 RCD and IR/EU Fees ......................................................................................... 44 2.3.7 Recommendations ........................................................................................... 53 3. Key substantive issues within the EU design framework ...................................... 54 3.1 Definition of a design .............................................................................................. 54 3.2 Informed user, individual character, and product sector ..................................... 63 3.3 Visibility in relation to product and complex product .......................................... 71 3.4 Disclosure rules ...................................................................................................... 78 3.5 Designs solely dictated by technical function ...................................................... 82 3.6 Relationship between Design Law and copyright ................................................. 92 4. Key procedural issues within the EU design framework……………………...….... 98 4.1 Representation of a design ..................................................................................... 98 4.2 Invalidity proceedings ........................................................................................... 102 4.3 Ex parte injunction ................................................................................................ 105 4.4 Non-availability of certain actions in all Member States ..................................... 106 4.5 Ex ante examination of novelty and individual character ................................... 108 5. Other issues arising in design law ......................................................................... 110 5.1 Novelty ................................................................................................................... 110 5.2 Designs of interconnections ................................................................................ 112 5.3 Designs contrary to public policy/public morality .............................................. 114 7 EUROPEAN COMMISSION 5.4 Rights conferred by a design and limitations ..................................................... 115 5.5 Other forms of protection: national unregistered design right, unfair competition and passing off ............................................................................................................ 117 5.6 Multiple applications ............................................................................................. 118 5.7 Exhibition priority .................................................................................................. 119 5.8 Deferred publication .............................................................................................. 121 5.9 Recommended amendments to align with other legislative instruments ......... 122 6. Optimisation of the EU design regime ................................................................... 128 6.1 Three Dimensional (3D) Printing .......................................................................... 128 6.2 Spare Parts ............................................................................................................ 135 7. Conclusions and recommendations .......................................................................... 153 7.1 General conclusion on the EU design regime ..................................................... 153 7.2 Priority issues and adverse aspects .................................................................... 156 7.2.1 Design, appearance and visibility ................................................................ 157 7.2.2 Scope and criteria of protection ................................................................... 159 7.2.3 Disclosure, nature of product, and geographic market .............................. 159 7.2.4 Designs dictated by technical function ........................................................ 160 7.2.5 Relationship between Design Law and copyright ....................................... 161 7.2.6 Procedural issues: representations ............................................................. 161 7.2.7 Procedural issues: invalidity proceedings .................................................. 162 7.2.8 Procedural issues: Ex ante examination of novelty and individual character ……………………………………………………………………………………………………162 7.2.9 Cross-border issues: Ex parte injunction and declaratory actions ........... 162 7.3 Optimisation of the EU design regime ................................................................. 163 7.3.1 3D printing .................................................................................................... 163 7.3.2 Spare parts for repair and replacement ...................................................... 163 8 EUROPEAN COMMISSION Executive Summary Introduction The Core Team, namely Time.lex CVBA, Spark Legal Network and Consultancy Ltd, and Queen Mary,
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