It is a common misconception, particularly among multinational businesses, that the European design protection system is nearly identical to the design patent system in the United States. In fact, this is not the case: The EU design system has significant advantages as well as certain disadvantages compared to the US system. The EU legislation (Council Regulation No 6/2002 of 12 December 2001 on Community designs) provides a broad definition of a design, which can apply to 3D or 2D objects, such as logos. Below, we take a look at some of the key features of design protections under EU regulation that are of relevance to the automotive industry.
The EU design regulation states that for a design to be protected, it must be new and have individual character. If no identical design has already been made available to the public in the European Union, the design will be “new.” This test is usually straightforward.
A design will be considered to have individual character if the overall impression it produces on an “informed user” differs from the overall impression produced by such a user by any design that has already been made available to the public in the European Union. The definition of “informed user” has led to significant litigation, with courts concluding that an “informed user” is neither an expert nor the consumer, but someone who sits between. For example, a car enthusiast may be an “informed user” for vehicle designs, as she is likely to pay more attention to the design of a car than the average consumer, but she is not a car designer, and therefore not an expert.
Article 110 in the EU regulation excludes spare parts for cars from EU design protection. It directly relates to parts that are for the purpose of repairs to restore a car to its original appearance. It keeps car manufacturers from obtaining design protection for components of cars that would prevent third parties from offering spare parts. However, Article 110 has been defined narrowly by the courts—for example, alloy wheels can be protected by EU designs and fall outside Article 110.
With an EU registered or unregistered design, the proprietor can stop others from producing cars made to that design or designs that do not impose on the informed user a different overall impression from the EU design.
Unregistered design protection exists automatically, similar to copyright. Unregistered design protection rights exist immediately after an eligible design is created. To establish infringement of an unregistered design, evidence of copying must be provided. Unregistered designs expire three years after the first public disclosure of a design. Unregistered designs are particularly useful for industries such as fast-moving fashion, which require the protection for a short period of time.
Conversely, for a design registered with the EU Intellectual Property Office (EUIPO), no evidence of copying is required to establish infringement. The registered design must be renewed every five years, up to a total of 25 years.
While taking these benefits into account, it should also be noted that the combination of some of these factors can lead to abuse of the European design system and has, in fact, led to many invalid designs being recorded as registered designs. For example, there are multiple instances of vehicle manufacturers obtaining design registrations for spare parts when it is unlikely those designs are valid, given the Article 110 exception discussed above.
EU design protections can be beneficial and are used significantly by a range of sectors within the automotive industry. For instance, they can be helpful in preventing potentially counterfeit products from being imported into the European Union, or they can be used as the basis of cease and desist letters in addition to notice and takedown processes on online marketplaces. However, formal infringement proceedings in court should be approached with caution unless the claimant has taken steps to confirm the validity of the registered designs before issuing the claim.
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