15 years of design litigation in the EU Member States - are the design directive and regulation effective?
Thanks to funding from the University of Nottingham (research priority area), Professor Derclaye produced two articles ("An Empirical Analysis of the Design Case Law of the EU Member States" (2019) IIC (with O. Church and G. Stupfler), and Derclaye, "EU Design Law: Transitioning Towards Coherence? 15 Years of National Case Law", in N. Bruun, G. Dinwoodie, M. Levin and A. Ohly (eds.), Transition and Coherence in Intellectual Property Law, Cambridge University Press, 2020, forthcoming 2020.
Together with Dr Stupfler, she also successfully applied for an University of Nottingham impact accelerator grant and thanks to it, presented the research to the European Commission DG GROW staff, first before the papers were submitted for publication and a second time once it was accepted. The Commission gave useful feedback and showed great interest for the paper.
The EU Intellectual Property Office invited Professor Derclaye to present the first paper for a live-streamed worldwide webinar and in law school news and she also was invited to present the research in several other outlets (UK Intellectual Property Office, Universities of Lund and of Copenhagen, Tilting 2019, IPRE 2019 and EPIP 2019); the latter was sponsored by the World IP Organisation (WIPO) who also showed interest in the research's impact.
Following this, Professor Derclaye has been in touch with the UKIPO to determine further research on designs and plans to gives talks about her research at future practitioners' events.
On 6 november 2020,
DG GROW, the European Commission’s Directorate General in charge of industrial property rights, has issued its evaluation report on the design directive and design regulation. The Commissions says “The results presented in the evaluation report show that EU legislation on designs works well overall and that it is still broadly fit for purpose. However, the evaluation revealed a number of shortcomings that need to be addressed to make the legal framework fit to support the digital and green transition of EU industry, and to become substantially more accessible and efficient for industries, SMEs and individual designers. These shortcomings include in particular a lack of clarity and robustness of certain key elements of design protection (subject matter, scope of rights and limitations), outdated or overly complicated procedures, inappropriate fee levels and fee structure, lack of coherence of the procedural rules and an incomplete single market for spare parts.”
A number of important conclusions in the evaluation report rely on Professor Derclaye’s works namely:
- E. Derclaye, “Doceram, Cofemel and Brompton: How does the current and future CJEU case law affect digital designs?” in B. Pasa (ed.), Design, technological and digital innovation. Interdisciplinary proposals for reshaping legal protections, ESI Press, Naples, forthcoming 2020, https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3507802
- O. Church, E Derclaye, and G. Stupfler, “An Empirical Analysis of the Design Case Law of the EU Member States” (2019) IIC, available at https://link.springer.com/article/10.1007/s40319-019-00813-0
- E Derclaye, “EU Design Law: Transitioning Towards Coherence? 15 Years of National Case Law”, in N. Bruun, G. Dinwoodie, M. Levin & A. Ohly, Transition and Coherence in Intellectual Property law, Cambridge University Press, forthcoming 2020, available at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3355353
The Commission’s next steps will surely be a revision of the design directive and design regulation. Future action on this can be followed here.