Brussels, 5 January 2024
See question(s) : E-003088/2023
EN
E-003088/2023
Answer given by Mr Breton
on behalf of the European Commission
(5.1.2024)
According to the Community Designs Regulation1 (CDR), the examination of a Community design application by the European Union Intellectual Property Office (EUIPO) does not extend to the novelty of the design. This is motivated by the legislator’s intention to provide creators of designs with rapid and inexpensive protection2 and therefore also maintained in the new EU design law proposed by the Commission. The European Parliament and the Council reached a provisional agreement on the new EU design law on 5 December 2023, which is still subject to endorsement and formal adoption by both institutions.
While the benefit of a novelty search would remain limited, as it could not include non-registered designs, it would negatively affect the overall duration of the registration process and cause extra burdens and costs for intellectual property offices and businesses seeking design protection. In the context of the public consultation on the evaluation of the CDR, a clear majority (66%) of respondents were not supportive of novelty examination being carried out at the EUIPO3.
To counter an abuse by parties who deliberately apply for not novel designs, an invalidity request can be filed before the EUIPO or as counterclaim in infringement proceedings before the court, claiming the lack of novelty4. In addition, the new EU design law provisionally agreed will allow introducing a ‘fast-track’ invalidation at the EUIPO to eliminate abusive registrations immediately5. If a design is registered by a person who was not entitled to do so, the person entitled to the design can also claim that entitlement6 or a right of prior use of the design7. The new EU design law provisionally agreed further facilitates the legitimate holders to seek for the acquisition of the design8.
1 See Articles 45 and 47 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, OJ L 3, 5.1.2002, p. 1–24.
2 See recital 24 to the CDR.
3 See SWD(2020) 264 final, p. 45.
4 See Article 52 CDR in conjunction with Article 25(1)(b) CDR.
5 Article 53a of the Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 6/2002 on Community designs and repealing Commission Regulation (EC) No 2246/2002, COM(2022)666.
6 Article 15 CDR.
7 Article 22 CDR.
8 Articles 15 and 16 of the Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 6/2002 on Community designs and repealing Commission Regulation (EC) No 2246/2002, COM(2022)666.