9 Legal protection of designs
| (25959)
12555/04
COM(04) 582
+ ADD 1
| Draft Directive of the European Parliament and of the Council amending Directive 98/71/EC on the legal protection of designs
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| Legal base | Article 95 EC; co-decision; QMV
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| Document originated | 14 September 2004
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| Deposited in Parliament | 23 September 2004
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| Department | Trade and Industry
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| Basis of consideration | EM of 11 October 2004
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| Previous Committee Report | None
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| To be discussed in Council | No date set
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| Committee's assessment | Legally and politically important
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| Committee's decision | Not cleared; further information awaited
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Background
9.1 The laws of Member States relating to the protection of registered
designs have largely been harmonised by Directive 98/71/EC on
the legal protection of designs.[15]
Under the Directive the appearance of a product may be protected
against use by a third party if it is a new and original design.
The design right which is conferred grants the exclusive right
of exploitation of a new and original design for the appearance
of an individual product (such as a table vase) or a complex product
(such as a motor car) or a component (such as a door panel).
9.2 Motor vehicles, in particular, will contain a
large number of components in which a design right may subsist,
but it did not prove possible to harmonise the laws of Member
States in relation to the after-market in spare parts at the time
the Directive was adopted. The Directive did not exclude spare
parts from the protection conferred by the design right, so that
it could apply to components supplied as original equipment in
complex products such as motor vehicles as well as to spare parts
in the secondary or after-market. Nevertheless, Member States
were required by Article 14 of the Directive to maintain their
existing laws in relation to the protection of spare parts by
design rights, except to the extent that any new measure served
to liberalise the market in spare parts.
9.3 A number of Member States, including the UK,
have provision in their laws relating to design rights to permit
the use of "must match" spare parts[16]
in repair or replacement in the after-market. Such so-called "repair
clauses" exist in the laws of Belgium, Hungary, Ireland,
Italy, Latvia, Luxembourg, the Netherlands, Spain and the United
Kingdom. Other Member States, including such substantial motor
vehicle producers as the Czech Republic, France, Germany and Sweden
still effectively retain design right protection for spare parts.
9.4 Article 18 of the Directive required the Commission
to review the position relating to spare parts and to make proposals.
In so doing, the Commission has considered a number of options,
including limiting further the duration of design right protection
and providing for a remuneration system for the use of protected
designs, as well as preserving the status quo, but has
concluded that the internal market would best be served by the
exclusion of spare parts used in the after-market from design
right protection.
The draft Directive
9.5 The draft Directive would replace the existing
provisions of Article 14 of Directive 98/71/EC. The new Article
14 provides that design right protection shall not exist for a
design which constitutes a component part of a complex product
which is used for the purpose of the repair of that complex product
so as to restore its original appearance. A new Article 14(2)
provides that Member States must ensure that consumers are "duly
informed" about the origin of spare parts so that they can
make an informed choice.
9.6 In its explanatory note to the provisions the
Commission explains that they are intended to harmonise and complete
the internal market through the full liberalisation of the market
for spare parts. It further explains that the new provision does
not limit the rights of design right holders, but prevents the
existence of monopolies on the spare parts market. The Commission
also points out that similar provision is already made in Council
Regulation (EC) No. 6/2002 on Community designs,[17]
Article 110(1) of which provides that "protection as a Community
design shall not exist for a design which constitutes a component
part of a complex product used … for the purpose of repair
of that complex product so as to restore its original appearance".
The Government's view
9.7 In his Explanatory Memorandum of 11 October 2004
the Parliamentary Under-Secretary of State for Science and Innovation
at the Department of Trade and Industry (Lord Sainsbury) explains
that the UK currently has one of the more liberal regimes for
the protection of spare parts, and that under United Kingdom law
the right in a registered design of a component part is not infringed
when used for the repair of a complex product so as to restore
it to its original appearance. The Minister adds that this allows
independent manufacturers of spare parts to compete in the spare
part after-market without risk of infringing the registered designs
of the original manufacturer and has resulted in the development
of a strong independent sector competing with the original manufacturers
in the repair market.
9.8 The Minister also informs us that the appropriateness
of design right protection for spare parts is contentious, with
Member States divided on the issue. The Minister adds that the
substance of the present proposal was contained in the original
proposal for Directive 98/71/EC, but that agreement could not
be reached. Instead, a compromise was reached whereby Member States
remained free to amend their law but only in the direction of
greater liberalisation. The Minister further explains that the
intention of this compromise was that greater liberalisation would
eventually be achieved at the national level, but that no significant
changes have in fact occurred.
9.9 The Minister also informs us that he will be
sending us a regulatory impact assessment as soon as possible.
He adds that the impact of the proposal should be positive, with
minimal burdens introduced, because the law in the UK is already
compatible with the proposal. The Minister indicates that the
main effect on UK business in the spare parts sector is that it
should become easier to conduct business on an EU level, because
"imports from and exports to countries in which the after-market
in spare parts is not currently liberalised will be facilitated
as their laws become aligned with the amended directive and hence
that of the UK". The Minister states that any potential negative
impact of the proposal would fall on manufacturers of complex
products, such as motor vehicles, but that as UK law is already
compatible with the proposal, "any costs should be minimal
and would only affect these manufacturers in other markets in
the EU". In the Minister's view, "there should be cost
savings for consumers who own, and need to repair, cars when the
visible parts need to be imported from European countries which
currently allow monopolies in these spare parts".
Conclusion
9.10 We note the Minister's explanation that the
proposal would overall have a positive effect, since it would
align the laws of Member States more closely with the provisions
of the law of the United Kingdom (and of a number of other Member
States) relating to design rights in spare parts.
9.11 Nevertheless, the Minister indicates that
there may be some negative effects for manufacturers of complex
products within the UK. We therefore hold the document under scrutiny
pending our consideration of the Regulatory Impact Assessment
which the Minister has promised.
15 OJ No. L 289, 28.10.98, p.28. Back
16
i.e. a part for which adoption of the design is necessary to restore
the original function or appearance of the product. An example
is a car body panel. Back
17
OJ No. L 203, 1.08.2002, p.30. Back
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