Design Directive Flashcard #3 : "Harmonisation of the Repair Clause"

FLASHCARD #3

Harmonisation of the Repair Clause

Concerns :
þ New Directive
þ New Regulation

The new Directive and Regulation contain significant provisions introducing a harmonised repair clause across the European Union.

The situation was previously highly fragmented : 

• Regulation 6/2002 on Community Designs (now European Union Designs) included provisions (Article 110) excluding protection for designs which constitute parts of a complex product used for the purpose of the repair of that complex product so as to restore its original appearance.
   
• As for national designs, the situation was inconsistent: some Member States did not have any repair clause in their national laws, while others had differing approaches, such as clauses limited to a specific sector or shorter-term protection for spare parts. In France, a repair clause was adopted in 2023, but it was limited to specific spare parts in the automotive sector.

From now on, a harmonised regime will be adopted across the EU. The aim is to develop the spare parts market while promoting a circular economy and encouraging product reparability.

Basic principle of the repair clause

The purpose of the repair clause is to make design rights unenforceable where the design of the component part of a complex product is used for the purpose of the repair of a complex product so as to restore its original appearance.

This serves as a defence mechanism for spare parts manufacturers who reproduce the shape of a protected design.

Conditions to invoke the repair clause

It should first be noted that the repair clause included in the Design package is not limited to a specific sector but applies to all fields of activity. 

Several conditions must be met to invoke the repair clause as a defence mechanism to a legal action brought by the design rights holder:

1. « Must match » criterion: the shape of the spare part must be dependent on the appearance of the complex product in which it is inserted.
    
2. Duty to Inform Consumers: spare parts manufacturers must provide clear and visible indication about the commercial origin and the identity of the manufacturer. That detailed information should be provided on the product or, where that is not possible, on its packaging or in a document accompanying the product. It should include at least the trade mark under which the product is marketed, and the name of the manufacturer.
    
3. Duty of diligence: manufacturers must ensure, through appropriate means (such as contractual means), that downstream users do not intend to use the component parts at issue for purposes other than of repair. This is not however a duty to guarantee the actual use made by the downstream user. 

It is only if all the abovementioned conditions are met that the manufacturer of the spare part can invoke the repair clause as a defence mechanism. On the other hand, if one of the conditions is not met, for example if the duty to inform the consumers about the commercial origin is not respected, the repair clause cannot be invoked and the legal action engaged by the rights holder can be successful. 

Transition Period

The Directive provides a 8 year transition period for national designs filed before 8 December 2024. If no repair clause was applicable to these national designs in the Member State concerned at this date, they will continue to be protected and enforceable against spare parts manufacturers until 8 December 2032.

On the other hand, for national designs filed after 8 December 2024, the repair clause will apply upon national transposition of the Directive. It should be noted that the transposition of the Directive into national law can take up to 36 months: until then, the existing national rules will remain in force.