On 14 March, the European Parliament formally adopted the texts for the new EU design regulation and EU design directive.
The texts were provisionally agreed with the Council on 5 December 2023. The Council must now formally adopt the texts and after that they will be published in the Official Journal.
More information on the regulation and the directive is available on the European Parliament’s website here and here respectively.
The design reform package aims to update definitions and fees for registered designs, which will become known as registered EU designs. It will also introduce a repair clause.
The MARQUES Designs Team continues to monitor the progress of the reform and will host a webinar on the topic later this year. If you have any questions in the meantime, please contact a member of the Team.
There were 25,343 designs included in international applications under the Hague System in 2023, a record number and an increase of 1% on 2022.
The number of designs increased for the third year in a row, according to data published by WIPO.
The top country of origin of applications was Germany (4,517 designs) followed by China (3,758) and the United States (2,668).
The number of designs filed from China increased by 46.9% while Türkiye saw an increase of 45.7%.
Samsung Electronics (544 designs in published applications) overtook Procter & Gamble (525) to become the top filer. They were followed by LG Electronics and Porsche AG (both 352) and Xiaomi Mobile Software (315).
According to the WIPO data, the largest share of total designs was in means of transport (11.2%), followed by recording and communication equipment (8.6%), furnishings (7.6%), packages and containers (6.9%) and household goods (5.6%).
WIPO has also published data on the Madrid and Hague systems in 2023. Read more on WIPO’s website here and on the Class 46 blog here.There are less than two weeks left to submit applications for the fifth edition of the DesignEuropa Awards: the deadline is 15 March 2024.
The winners of this year’s awards will be announced at a ceremony in Riga, Latvia later this year in the following categories: The Industry Award, The Entrepreneurs and Small Companies Award, The Lifetime Achievement Award and The Next Generation Design Award (new category).
EUIPO recently announced the composition of the jury who will select the finalists and winners of all the categories. They are:
Find out more about the jury members and the DesignEuropa Awards on the dedicated page on EUIPO’s website.
A decision of 29 March 2023 of the General Assembly of the Turkish Court of Cassation has clarified whether the examination of lawfulness of the Turkish Patent and Trademark Office’s decision on absolute novelty of a design is limited to the evidence submitted in the opposition process or whether ex officio examination can be conducted at any phase.
Güldeniz Doğan Alkan and Hatice İnci Turan report for Class 99.
The facts of the case
After the publication of the design application (pictured top), a company opposed this application by claiming that it lacked novelty. It based its opposition on its own design (pictured below).
Based on the evidence submitted by the opponent, the Office refused the application due to lack of novelty. Thereupon, the applicant requested the cancellation of this decision.
The decision of the IP court
The IP court cancelled the decision and ruled that the application was new, as the expert report determined that it was new based (only) on the evidence submitted before the Office, even though it was not considered new based on ex officio research conducted by the experts.
The IP court overlooked the ex officio research of the experts and only considered the evaluation made by the Office based on the evidence submitted in the opposition process. It stated that the case was about determining whether the Office’s decision was lawful and correct at the date it was rendered.
Therefore, the court found that the novelty examination is limited to the documents provided before the Office. The Office is not entitled to request or examine further ex officio, as re-conducting the absolute novelty examination would be contrary to the assessment of the legality of the Office decision.
The decision of the Court of Cassation
Upon the appeal of the Office as defendant, the dispute was brought before the Court of Cassation, which reiterated that if a design has not been presented to the public anywhere in the world before the application or priority date, it shall be accepted as new.
Therefore, it ruled that the absolute novelty should be examined ex officio by the court by considering the evidence submitted by the parties and the expert examination. Therefore, it reversed the decision.
The decision of the IP Court
Upon the reversal, the IP Court persisted in its decision, stating that the opponent had the opportunity to put forward any evidence in the opposition process and the Office rendered its decision within the framework of this evidence.
It said that only this evidence should be considered; otherwise, it would be concluded that the Office would have made an unlawful decision based on evidence that was not brought before the Office, but which was reached by the experts on their own initiative.
After this decision, the Office appealed again and the dispute was brought before the General Assembly, this time to decide which of the decisions was correct.
The decision of the General Assembly
The General Assembly precisely and clearly ruled that the absolute novelty examination shall be made ex officio, independently from the evidence submitted in the opposition process and the court shall investigate whether the same design has been presented to the public anywhere in the world before the application or priority date.
Likewise, both in a cancellation action against the Office’s decision and in an invalidity action against a design registration, experts shall determine whether the design in question has met the absolute novelty requirement by conducting ex officio research.
Since the element of absolute novelty in patents, utility models and designs is related to public order, it is mandatory both for the Office and the courts to conduct absolute novelty examination ex officio. Therefore, the decision of the IP Court was annulled.
Comments
The decisions going back and forth between the courts contributed to the interpretation of the absolute novelty requirement of designs and its reflection into examination of the evidence both submitted in the opposition and ex officio gathered in court process.
Although the IP Court only considered the evidence submitted before the Office, the approach of the General Assembly complies with the principle of absolute novelty, which arises from public order.
Even if the Office’s decision was requested to be cancelled, the main purpose of the decision was to decide on the design’s absolute novelty and it shall be examined ex officio to meet the requirement of “absoluteness”.
Güldeniz Doğan Alkan and Hatice İnci Turan are members of Gün + Partners in Turkey and Güldeniz is a member of the MARQUES Designs TeamThe EUIPO introduced a new e-filing form for registered Community designs on 13 January, which will eventually replace the existing forms for filing applications.
The new form will coexist with the current forms for three months, until 13 April 2024. After that date, only two forms will be available: the RCD easy filing and the new RCD advanced form.
According to EUIPO, the benefits of the new form include:
Find out more on this page on the EUIPO and by watching the webinar on the registration process. EUIPO also welcomes feedback on the new form.The EU Council and European Parliament reached a provisional agreement on the designs package on 5 December, paving the way for updates to the directive on the legal protection of designs and the regulation on Community designs.
The changes include the renaming of RCD to EUCD, changes to the definition of design, adjustments to the fees and the introduction of a registered design symbol. The revised directive will also include a new repair clause.
The repair clause excludes from design protection replacement parts for a complex product if they are used to restore its original appearance. It only applies for repair purposes and if the replacement part looks exactly like the original piece (such as a damaged door, or a broken light of a car that should be replaced to make the car look as it was). This clause aims to liberalise the spare parts market and ensure that more accessible spare parts for repair are available to consumers. It provides for an eight-year transition period.
The agreement now needs to be endorsed and formally adopted by the Council and Parliament.
MARQUES has worked alongside ECTA and INTA to provide substantial input during the discussions on the design reform, and the Designs Team held a workshop with speakers from EUIPO during the recent Annual Conference in Berlin.
More information about the reform package is available on the Designs Team page. The Team will provide further analysis once more details are available.
You can find out more in the meantime on the European Council website.The application period for the DesignEuropa Awards opened this week and runs until 15 March 2024.
Nominations can be made in four categories:
The application criteria are:
The winners will be announced in a ceremony which will take place in Riga, Latvia.
The EUIPO website has more information, including the rules and a link to nominate.
