More clarity on “normal use” in EU design law
The Court of Justice of the European Union has offered some clarity on what may be deemed ‘normal use’.
The EUIPO, the body responsible for the registration of European community registered designs, recently held the webinar titled “Trade marks and designs in the metaverse: legal aspects/EUIPO practice”. The webinar explored the enforcement and protection of designs and trademarks in the metaverse.
The webinar refers to the metaverse as the “immersive and constant virtual 3D world where people may interact through an avatar” with key industries likely to benefit from the metaverse being fashion, gaming, entertainment, education and e-learning.
NFTs were referred to as “unique digital certificates registered in a blockchain, that is used to record ownership of an asset such as an artwork or a collectible”. The webinar stresses that the term should not be understood to mean the digital asset itself.
A number of digital designs, such as icons (static and dynamic), animated characters, holograms, displays, projections, video games, virtual interfaces, voice user interface and virtual spaces may be used in the metaverse.
The webinar explored the current legislation and the application of digital designs in the metaverse by answering the following questions:
Are designs protected in the virtual world?
The EUIPO highlight that according to Paragraph 4.1.3 of the EUIPO guidelines “Designs of screen displays and icons, graphic user interfaces and other kinds of visible elements of a computer program are eligible for registration”. As such, they feel that digital designs for use in the virtual world are registerable.
Does use in the metaverse amount to use of the design under Article 19 and Article 10 CDR?
Article 19 CDR indicates that:
“A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.”
The EUIPO indicated that use of a design in the metaverse may amount to a use in accordance with Article 19 CDR. However, at present, the EUIPO note that it is unclear whether the term product covers a virtual product given the present definition in Article 3 CDR, i.e. any industrial or handicraft item. However, the EUIPO are hoping that upcoming legislative changes may amend this definition to include, for example, any physical or virtual industrial or handicraft item.
Consequently, it still does not appear any clearer whether enforcement of design right against use in the virtual world is possible in the absence of further case law (which would come from design courts, rather than the EUIPO, which is not responsible for enforcement).
Are the current design representation requirements outdated?
The EUIPO highlighted the current ways in which registered designs can be represented, namely that a design may be represented by up to 7 static views which may be a drawings, photographs or computer made representation.
It was also highlighted that 3D computer-animated designs are accepted but only for reference purposes. Similarly, they highlight that a description may be given, but that this is not taken into account for determining the scope of protection.
Finally, the EUIPO highlighted that certain features may be disclaimed, such as by the use of broken lines. However, it was discussed whether or not these are suitable for digital designs.
EUIPO recommendations for product indications under Art. 36(2) CDR
Article 36(2) CDR requires that “the application shall further contain an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied”.
In the case of digital designs, the EUIPO recommended:
As use of the metaverse increases and its popularity grows, protection of registered designs in the metaverse will become of greater importance.
The EUIPO’s webinar highlights that digital designs are registerable at the EUIPO and they see no reason why use of a design in the metaverse shouldn’t fall within Article 19 CDR. However, they note that at present it is not certain whether a virtual product falls within the definition of a product provided in Article 3 CDR. However, they hope that this will be changed with upcoming legislative changes.
In this regard, it must be noted that the EUIPO is only the body responsible for managing the registration of registered Community designs and is not concerned with the enforcement of registered community design rights. Instead, enforcement of a design will be decided in the national courts of the relevant EU member state.
Therefore, although it is interesting to hear the EUIPO’s view on the registration of digital designs, it will be interesting to see how the legislation develops and the national courts treat enforcement of design rights in the metaverse in the coming years.
If you would like advice on protecting digital designs or protecting your designs in the metaverse, please get in touch to speak with one of our attorneys.