Over the weekend a Recast Directive and Amending Regulation for the long-awaited design package will enter into force throughout the European Union. National patent offices and the EU Intellectual Property Office have until July 2026 to iron out the details but to maximize the potential of the reforms, consistent implementation by member states will be key.
The EU’s design reform package is set to make life simpler for design holders.From blocking competitors from copying their products and providing coverage for graphical user interfaces to other digital creations and exempting must-match parts from design protection, the update will make it quicker and easier for them to protect their intellectual property.
The impact of these rules, however, will largely depend on the details in the regulation drafted by national offices and the EU Intellectual Property Office, or EUIPO.
The legislative package (see here) was published in the EU’s Official Journal in November, starting the 36-month clock for member states’ implementation of the Recast Directive on the Legal Protection of Designs. The Amending Regulation on Community Designs will be implemented in two phases over the next 18 months.
Both enter into force on Sunday, December 8 — 20 days after the publication in the bloc's official bulletin.
— Fast track —
One of the most eagerly awaited changes involves the introduction of a faster invalidity procedure at the EUIPO, which provides for an accelerated process when a design is copied and registered for the purpose of blocking an original designer from selling their product.
That quicker turnaround time will be “particularly helpful in cases of design hijacking or flagrant infringement, when actions of the legitimate design owner will not be contested,” Šárka Pětivlasová, senior associate at Hogan Lovells, told MLex.
Additionally, in an undefended design invalidity action, Pětivlasová says it can take as long as one year to get a decision on the merits. The wait could be slashed by as much as half, thanks to Article 53 (a) of the regulation, which calls on the EUIPO to prioritize disputes “where the holder of the registered EU design does not contest the grounds of invalidity or the relief sought.”
— Administrative challenge —
Nathalie Dreyfus, trademark attorney and founding partner of Dreyfus law firm, singles out the introduction by the directive’s Article 31 of an administrative invalidity procedure — not unlike the post-grant and inter partes review proceedings available to design patent challengers in the US — as the most significant change of the regulation.
“These provide faster and less costly recourse, especially important for small and medium-sized enterprises,” Dreyfus told MLex. “However,” she added, “their effectiveness will depend on consistent implementation across the union.”
Article 84 of the regulation also requires national courts to stay in litigation upon notification of a counterclaim or if an administrative invalidity application was filed earlier until the administrative agency reaches a decision.
“This shift aims to improve accessibility while reducing the costs and delays associated with challenging design rights,” Dreyfus said. “Similar to trademarks or domain names, these changes reflect efforts to modernize and streamline the system.”
— Optional nature —
Key unknowns, and where member states may diverge, include whether a request for a declaration of invalidity must be substantiated with arguments and whether an uncontested invalidity request will result in a cancellation by default. “This is what would be most beneficial, as one would not need to go through the costs of substantiating the invalidity action,” Pětivlasová said.
She continued, however, that even if the substantiation requirement remains, the new provisions call for the entry of a default judgment that does not address the merits. That decision would take approximately four months, saving time and resources for parties, practitioners and the EUIPO.
EU countries will have until December 2027 to transpose the directive and choose to offer the administrative invalidity procedures as an alternative to judicial proceedings, depending on the country’s implementation.
“While the introduction of these procedures is beneficial, their optional nature may lead to inconsistent practices across member states,” Dreyfus said. Making these procedures mandatory would help provide more legal certainty, she added.
— Extended transition —
The reform makes permanent repair requirements that support competition in the spare parts market by exempting must-match parts, like car components, from design protection if used to restore a product’s original appearance.
While this benefits consumers and aftermarket manufacturers with lower costs and more options, it reduces design holders’ exclusivity, especially in the automotive sector. An eight-year transition period for existing national protections seeks to ease the shift.
Another important change involves the recognition of digital designs.
The updated definitions of "design" and "product" now explicitly include animated designs and virtual environments, meaning digital and non-physical designs — such as graphical user interfaces, surface patterns, and spatial arrangements of interior or exterior designs — will, for the first time, be eligible for protection.
However, the biggest concern raised by stakeholders thus far centers on the planned increase in renewal fees, which, in some cases, could be substantial. The change is expected to impact long-term design holders, particularly in industries reliant on maintaining extensive design portfolios, MLex understands.
The efforts will be led by national authorities like trademark or patent offices as well as the EUIPO. They are then reviewed and adopted by the European Commission.
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