CAD Files and European Design Law

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Cited in

Author	Viola Elam
Pages	146-162

2016

Viola Elam

146

CAD Files and European Design Law

by Viola Elam*

Everybody may disseminate this ar ticle by electronic m eans and make it available for downloa d under the terms and

conditions of the Digital P eer Publishing Licence (DPPL). A copy of the license text may be obtain ed at http://nbn-resolving.

de/urn:nbn:de:0009-dppl-v3-en8.

Recommended citation: Vi ola Elam, CAD Files and European Design Law, 7 (2016) JIPITEC 146 pa ra 1.

Keywords: Community design; CAD file; 3D printing; EUIPO; disclosure; informed user; spare parts; scope and

criteria of protection; infringement

ital representations of designs. The enquiry goes on

to illustrate the implications that the making of a CAD

file available online might have. It suggests that the

act of uploading a CAD file onto a 3D printing plat-

form may be tantamount to a disclosure for the pur-

poses of triggering unregistered design protection,

and for appraising the state of the prior art. It also ar-

gues that, when measuring the individual character

requirement, the notion of “informed user” and “the

designer’s degree of freedom” may need to be recon-

sidered in the future. The following part touches on

the exceptions to design protection, with a special fo-

cus on the repairs clause set forth in Article 110 CDR.

The concluding part explores different measures that

may be implemented to prohibit the unauthorised

creation and sharing of CAD files embedding design-

protected products.

Abstract: Three-dimensional printing (“3DP”)

is an additive manufacturing technology that starts

with a virtual 3D model of the object to be printed, the

so-called Computer-Aided-Design (“CAD”) file. This

file, when sent to the printer, gives instructions to the

device on how to build the object layer-by-layer. This

paper explores whether design protection is available

under the current European regulatory framework

for designs that are computer-created by means of

CAD software, and, if so, under what circumstances.

The key point is whether the appearance of a product,

embedded in a CAD file, could be regarded as a pro-

tectable element under existing legislation. To this

end, it begins with an inquiry into the concepts of “de-

sign” and “product”, set forth in Article 3 of the Com-

munity Design Regulation No. 6/2002 (“CDR”). Then,

it considers the EUIPO’s practice of accepting 3D dig-

A. What is three-dimensional

printing and what is a CAD file?

The term “three-dimensional printing” (“3DP”)

can be considered as an umbrella term that stands

for a set of related technologies building physical

objects by the consecutive addition of liquids,

sheet or powdered materials in ultra-thin layers.

Hence, in contrast with traditional “subtractive

manufacturing” technologies, which mostly rely

on the removal of material (e.g. cutting, drilling

and milling), 3DP is an “additive manufacturing”

technology. The peculiarity about 3DP is that every

physical object is created directly from a digital

le, the so-called Computer-Aided Design (CAD)

le. The latter is a virtual 3D model that serves to

send information to the printer on how to build the

object.

2 A CAD le can be obtained in different ways. First,

it can be created from scratch, by using modelling

software (“CAD software”). A number of open-source

software tools are freely available online. They enable

individuals with no prior experience in 3D modelling

to create their own designs, with some programs

providing pre-rendered shapes1. Furthermore, many

websites offer tutorials on modelling best practices

to assist users who are not design professionals2.

Second, an existing object could be turned quickly

into a virtual 3D model by using a 3D scanner. The

latter is a device that collects a huge amount of

data from a real-world object, by means of lasers

1 E.g. FreeCAD, Sketchup or ThinkerCad.

2 For example, Sculpteo provides a tutorial for users of the

“Sketchup” 3D modelling software, available at:

www.sculpteo.com/en/tutorial/prepare-your-model-3d-

printing-ketchup/.>

CAD Files and European Design Law

2016

147

or x-rays. Hence, it reproduces a high-resolution

and accurate digital model of the scanned object

(“3D visualization”). Third, photogrammetry is a

valid alternative to 3D scanning. It is a photography

technique that uses software tools for stitching a

series of 2D photographs – taken from different

angles – together into a 3D model.

4 A CAD le can be saved in different formats, such as

the .stl format (“STereoLithography”) or the .amf

format (“Additive Manufacturing Format”). The .stl

format merely describes the surface geometry of a

three-dimensional object as a set of triangular faces,

whereas the .amf format is an XML-based format

inclusive of information about the volumetric

structure of the interior, composition, colour,

geometry and material.

At a second stage, CAD les need to be processed,

in order to become printable. Hence, a (CAD or

scanned) 3D model has to be segmented into a

number of layers by specialized software, so-called

“Computer-Aided Manufacturing” software or

“slicer”. The latter generates a G-code for each layer,

which contains commands to tell the printer how to

manufacture the object3. The slicing programs are

usually included with the printer or available online

for download4.

It emerges from the above considerations that three

consecutive steps have to be followed in an ordinary

3DP process: the creation of a virtual 3D model; the

deconstruction of the 3D model into a series of

slices (“slicing”), which are sent to the 3D printer

through a computer code; the nal print, consisting

in a layer-by-layer deposition of suitable materials.

3DP has gained a wider distribution among the

general public in recent years. The launch of Open

Source Hardware initiatives, such as the “Replicating

Rapid Prototyping” (“RepRap”) project5, together

with the expiration of a number of key patents on 3D

printing technologies, have contributed to a steady

improvement in the quality of personal 3D printers

and to a considerable reduction in hardware costs6.

The technology has, therefore, crossed over into

3 The CAD and CAM functions could also be integrated into a

single CAD/CAM program.

4 E.g. Slic3r, Cura and Skeinforge.

5 This project was launched by a research team at the

University of Bath. The idea was to create an open source

3D printer capable of reproducing its own spare parts. The

specications of the hardware (e.g. CAD les, mechanical

drawings, diagrams, etc.) were made freely available online

for anyone to use, modify and update. The RepRap project

could be realised because key patents, covering the fused

deposition modelling technique, had expired.

6 Before 2009 the cheapest personal 3D printer on the market

was offered for around €15.000. Today, the price for a

personal 3D printer ranges from €500 to € 2000.

the consumer sphere, with over 100,000 desktop 3D

printers having been sold so far7.

Furthermore, online platforms dedicated to the

dissemination of CAD les (“digital-design-le-

sharing”) have grown in popularity. These platforms

have contributed to the creation of a communication

infrastructure that is a powerful tool for co-creation.

They enable individuals to connect to a vast and

distributed network, where they can upload,

download, edit, remix, share or indeed sell a CAD

le, from which a 3D printed product will emerge.

Some recent studies, conducted by Rayna et

al.8, Moilanen et al.9, and Mendis et al.10, provide

examples of the diversity of existing 3DP platforms.

The latter include platforms, such as Thingiverse,

where users license their CAD les – rather than

selling them – under Creative Commons licences

(CC) or General Public Licence (GPL). By using CC

licences, the CAD le’s proprietor can withhold

certain rights (e.g. the right of attribution and the

right to make derivative works), and impose that

derivatives should be licensed under the same terms

as the licence of the original CAD le (the “Share

Alike” clause). Furthermore, the “Non Commercial

Use” clause restricts the possibility for the licensee

to use the CAD le for commercial purposes.

Other platforms, such as Cuboyo, offer paid

downloads to users’ CAD les (i.e. the 30% of the sale

price goes to the website, whereas the remaining

70% goes to the seller)

. Moreover, online platforms,

such as Shapeways and Sculpteo, offer printing and

delivery services on demand. Taking as an example

the architecture of Sculpteo, the 3DP process takes

place in the following way: individual users upload

their CAD les onto Sculpteo website; Sculpteo

automatically repairs any defect and optimizes the

digital blueprint, with its own 3D tools; then, it prints

the object and delivers it to costumers in nished

form, charging a price for its activities.

11 Whether personal 3DP will reach its full potential in

7 Mendis, Secchi, report commissioned by the UK Intellectual

Property Ofce, A Legal and Empirical Study of 3D Printing

Online Platforms and an Analysis of User Behaviour (March

2015), p. 2.

8 Ranya, Striukova, Darlington, Open Innovation, Co-Creation

and Mass Customisation: What Role for 3D Printing Platfroms?,

T. D. Brunoe et al. (eds.), Proceedings of the 7th World

Conference on Mass Customization, Personalization, and

Co-Creation (MCPC 2014), Aalborg, Springer (2014).

9 Moilanen, Daly, Lobato, Allen, Cultures of Sharing in 3D

Printing: What Can we Learn From the Licence Choices of

Thingiverse Users?, Journal of Peer Production (6), Disruption

and the Law (2015), available at:

sol3/papers.cfm?abstract_id=2440027>.

10 Supra note 7.

11 Moilanen et al. (2015), supra note 9, p. 4.

2016

Viola Elam

148

the near future is not altogether clear yet. For the

time being, 3D printing by individual makers reveals

major technical limitations to seriously hinder the

market for quality products. The 3DP community

is still a small niche, and the dissemination of CAD

les on the Internet is not a mass phenomenon yet.

So far, digital-design-le-sharing shows a high level

of participation by 3DP enthusiasts12. Furthermore,

to date, there is only evidence of IP infringement

occurring on a small scale, on online platforms such

as Thingiverse13.

Having noted that, the speed of technical

developments in consumer 3D printing is undeniable.

The level of precision and accuracy attainable by a

desktop 3D printer is steadily rising. The price of

printing material has dropped drastically, and the

technology has also become faster, more reliable

and cheaper.

Furthermore, there are continuous attempts to make

3D printing more easily accessible and affordable for

the average consumer. To give a recent example,

an Italian company specialized in rapid prototyping

and digital fabrication, called Solido 3D, came up with

one of the latest innovation in 3DP. It developed a

device, named “OLO”, which enables printing 3D

objects directly from a smartphone14. Because of its

size, weight, and battery power source, this device is

considered as the rst portable 3D printer, available

for sale at the price of $ 9915.

It is therefore maintained that, although personal

3D printers are still far from being ubiquitous, it

is just a matter of time until ordinary people will

manufacture – directly from a digital le – an

increasing number of items at the comfort of their

home. Furthermore, in the event that products are

not capable of being printed by means of personal

3D printer, it is possible to outsource the actual

manufacture to bureau services, such as Sculpteo

and Shapeways. Users can create online shopfronts,

where they display their own CAD les for products.

The Internet operator will then 3D print the product

on demand and deliver it worldwide.

12 Based on data extracted from 17 online platforms, the total

number of downloads, for the time-period 2008-2014, is

around 40.000. See Mendis, Secchi, UK Intellectual Property

Ofce (2015), supra note 7, p. 28.

13 See Hamdi, IP Law vs 3D Printing: the 5 Worst Examples, Trinckle

blog (September 18, 2015). Retrieved February 7, 2016 from

14 See .

15 OLO is a crowd-funded project, launched on kickstarter on

March 21, 2016. The aim of the developers of this portable

3D printer was to raise $ 80.000 in one month, whereas they

reached this goal in just thirty-three minutes. At the end of

the fundraising campaign, they collected $ 2,321,811 with

16,180 backers from all over the world.

I. Is a CAD file a computer program?

An emerging body of literature has addressed the

question of whether CAD les warrant copyright

protection16. Some scholars have suggested that

the denition of computer programs is perfectly

compatible with CAD les17. The present writer,

however, rejects former existing assumptions on

the application of this analogy.

As noted above, a CAD le simultaneously

encompasses both a “design drawing component”

and a “code component”. The latter serves to give

a series of instructions to the printer (i.e. where to

move the print head and how fast to deposit the

material). Even if a CAD le embeds a code, it is not

the equivalent of a computer program. This in light

of the fact that the designer of a CAD model does not

write the code herself, at least not directly.

As noted by Dolinsky, “the CAD designer ... “creates”

the code necessary to print the object only by

creating the design”, whereas the CAD software

programmer has already predetermined the code

associated with a pre-made shape or a free-hand

drawing18. It is therefore only the CAD software

that nds protection under the Software Directive

2009/24/EC, not the CAD le itself.

Although an enquiry on the copyright status of

CAD les goes beyond the purposes of the present

analysis, it is here suggested that a CAD le merely

serves as the medium in which a copyright protected

work (i.e. artistic work) is recorded. To the extent

that the design drawing component of the CAD le

is the expression of the author’s creativity, and is not

dictated by purely functional considerations, it may

qualify as a copyright protected work. By contrast,

the le itself is just the medium in which the work is

recorded. The fact that the work exists in digital le

format does not change its nature. In this respect,

a CAD le bears a certain similarity to other les,

16 Among others: Rideout, Printing the Impossible Triangle:

The Copyright Implications of Three-Dimensional Printing, The

Journal of Business, Entrepreneurship & the Law (2011),

5(1); Simon, When Copyright Can Kill: How 3D Printers Are

Breaking the Barriers Between “Intellectual” Property and the

Physical World, PIPSELF (2013), 3; Weinberg, What’s the Deal

with Copyright and 3D Printing, available at

publicknowledge.org/news-blog/blogs/whats-the-deal-

with-copyright-and-3d-printing> (2013); Dolinsky, CAD’s

Cradle: Untangling Copyrightability, Derivative Works, and Fair

Use in 3D Printing, Washington and Lee Law Review (2014),

71(1); Mendis, Clone Wars Episode II – The Next Generation: The

Aided Design (CAD) Files, Law, Innovation and Technology

(2014), 6(2).

17 See, among others, Bradshaw, Bowyer, Haufe, The Intellectual

Property Implications of Low-Cost 3D Printing, SCRIPTed (2010),

7(1), p. 24.

18 Dolinsky, supra note 16, p. 641.

CAD Files and European Design Law

2016

149

such as JPG or PDF les, which respectively embed

a photograph or a literary work.

Therefore, the distinction between what is the

work of authorship, as opposed to the medium of its

expression, takes on a particular signicance when

claiming copyright protection of CAD les.

II. Aim of the present analysis

This paper explores whether design protection is

available under the current European regulatory

framework for designs that are computer-created

by means of CAD software, and, if so, under what

circumstances. The key point is whether the

appearance of a product, embedded in a CAD

le, could be regarded as a protectable element

under existing legislation. To this end, it begins

with an inquiry into the concepts of “design” and

“product”, set forth in Article 3 of the Community

Design Regulation No. 6/2002 (“CDR”). Then, it

considers the EUIPO’s practice of accepting 3D digital

representations of designs. The enquiry goes on to

illustrate the implications that the making of a CAD

le available online might have. It suggests that the

act of uploading a CAD le onto a 3D printing platform

may be tantamount to a disclosure for the purposes

of triggering unregistered design protection, and for

appraising the state of the prior art. It also argues

that, when measuring the individual character

requirement, the notion of “informed user” and

“the designer’s degree of freedom” may need to

be reconsidered in the future. The following part

touches on the exceptions to design protection,

with a special focus on the repairs clause set forth

in Article 110 CDR. The concluding part explores

different measures that may be implemented to

prohibit the unauthorised creation and sharing of

CAD les embedding design-protected products.

B. Designs in the European Union

For the purposes of the Community Design

Regulation (“CDR”), “design” means “the appearance

of the whole or a part of a product”19. While there

is no denition of appearance, Article 3(a) CDR

provides a non-exhaustive list of elements that one

may have to consider, for appraising the external

aspect of a product. These elements include the lines,

contours, colours, shape, texture and/or materials of

the product itself and/or its ornamentation. These

features are all perceivable by the human eye or by

the sense of touch, whereas sounds and smells are

19 Article 3(a) CDR.

not contemplated20. Yet the CDR does not make the

eye appeal a necessary prerequisite for registration.

Furthermore, as noted by the European Commission

in the 1991 “Green Paper on the Legal Protection of

Industrial Design”

, the external aspect of a product

is of considerable economic importance. The notion

of appearance, therefore, should be broad enough

to encompass any economic value attached to the

aspect of a product.

23 Article 3(b) CDR goes on to dene a product as “any

industrial or handicraft item other than computer

programs”. It then offers some guidance as to the

type of designs that are eligible for protection. The

latter include both three-dimensional designs, such

as packaging and get-up, and two-dimensional

designs, such as graphic symbols and typefaces

Designs of parts of products, for which no assembly

is required, and designs of component parts, which

are intended to be assembled in a larger complex

product, can also be protected23.

24 The concept of product, therefore, is central to the

whole structure of the CDR. The essence of a design

is the appearance of a product. Furthermore, as

explained below in more detail, there should be a

product, to which the design is applied, in order to

commit an infringement.

The following enquiry aims at analysing whether the

appearance of a product that is represented digitally

as a CAD le may attract design protection under

existing EU legislation.

I. The visual element of a CAD file

The ultimate generation of designs created by

means of CAD software embed all information that is

needed to dene the outer appearance of a product.

Embedded data can describe the geometry, as well

as the colours and materials of the product. In this

respect, the design-drawing component of a CAD

le differs from traditional blueprints or technical

drawings. In most cases, blueprints only dene the

geometrical aspect of an object. They may be seen as

graphical abstractions of the intended product that

need to be interpreted by a human being.

CAD les, instead, may dene all the properties

20 See Suthersanen, Design Law: European Union and United States

of America, 2nd edn., Sweet and Maxwell (2010), p. 95.

21 European Commission, Green Paper on the Legal Protection

of Industrial Design, June 1991, at 2.1.2.

22 The list of products enumerated in this provision is not

intended to be exhaustive.

23 Article 3(c) CDR.

2016

Viola Elam

150

and attributes of the product to be printed. They

may contain the entire product design that, when

printed, will be a nished 3D product. In such a case,

in parallel with a photograph, the visual element of a

CAD le – i.e. the image of the product stored therein

– may be regarded as a view of the appearance of

the nished product, for which protection is sought.

The CAD le can be seen as the medium in which the

design is rst recorded. Hence, as noted below, the

appearance of the product embodied therein may

enjoy Community design protection, irrespective of

whether the product comes into existence or not.

By contrast, in case where a CAD model does not

clearly reveal the outer appearance of the product, it

may be allegedly considered as a blueprint protected

in class 19-08 of the Locarno classication (i.e. “other

printed matters”)24.

II. Digital item embedded in a

CAD file: design protection?

30 The issue at stake is whether a digital item, which

is computer created by means of CAD software and

recorded in a CAD le, may attract design protection

in its own right, as a graphic symbol.

At rst reading, the notion of a “design” seems to be

conned to the appearance of products having some

physical form, insofar as the CDR makes express

reference to “industrial or handicraft items”, and

expressly excludes computer programs.

32 Hence, the denition of “product” set forth in the

CDR may give rise to a certain degree of uncertainty

as to whether a design, that is not applied to a

product in the sense of a physical, tangible object,

should likewise be considered as a protectable

element under existing regulation. The inclusion

of graphic symbols in the meaning of products

indicates that protectable designs need not be

tied to a physical dimension. The European Union

Intellectual Property Ofce (“EUIPO”) guidelines

provide some assistance in this respect. The Ofce’s

practice allows registration of screen displays, icons,

and other visible elements of a computer program,

such as graphical user interfaces (“GUIs”), in Locarno

class 14, Subclass 04 (“screen displays and icons”)25.

24 See EUIPO Guidelines for Examination of Registered

Community Designs, version of 01/08/2016, at 4.1.1.

25 Id., EUIPO Guidelines, at 4.1.3. Also, the Explanatory

Memorandum claries that the exclusion provided in the

CDR for computer programs does not extend to “specic

graphic designs as applied, for example, to icons or menus”.

See EU Commission, Explanatory Memorandum on the

Proposal for a European Parliament and Council Regulation

on the Community Design, 3 December 1993, p. 11.

Therefore, design protection appears to cover all

digital items – with the sole exclusion of sounds and

animated images – that appear on electronic devices,

such as computer screens or mobile phones.

By contrast, computer programs as such are excluded

from design protection. The reason for inserting

this exclusion is explained in the Explanatory

Memorandum of the rst proposal of the CDR.

The rationale was mainly to avoid any potential

interference with the Software Directive which

might arise whenever copyright protection provided

under the aforementioned Directive is supplemented

or reinforced by a protection of the “look and feel” of

a computer program by way of design protection26.

In theory, if a computer item is eligible for

protection, the digital item represented in a CAD le

could likewise enjoy Community design protection.

One may argue that, in parallel with other computer

icons, the item embodied in a CAD le is a graphic

symbol that appears on a computer screen when

the le is loaded. Since the CDR enumerates graphic

symbols as a category of product of their own, their

appearance can be protected under the title of

Community designs.

36 This analogy appears questionable, however. There

is a substantial difference between a computer icon

and a product embedded in a CAD le. The former

fulls its function exclusively once it is displayed on

a computer screen. As noted by Margoni, it does not

even possess the characteristics to be manufactured

or printed into an industrial or handicraft item27. It

is “intangible” by its very nature. On the contrary,

not only can an item embedded in a CAD le become

tangible once it is shown on a computer screen, but

it could also be turned into a physical product at the

click of a button.

In other terms, the reason why a person creates a

CAD le is to enable the manufacturing of the object

embodied therein. Design rights are vested in the

appearance of the product to be made from that le.

Having noted that, an applicant may also wish to

protect the virtual product per se under the scope

of European design law in order to avoid the risk

that no protection will be available, should a third

party make a digital copy of its design, i.e. creates

a CAD le depicting the design-protected product

and uploads such CAD le on the Internet. In fact,

as discussed below in more detail, Article 19 CDR

seems to conne infringing use of a design to use in

relation to physical goods or corporeal movables28.

26 Id., Explanatory Memorandum, p. 11.

27 Margoni, Not for Designers: On the Inadequacies of EU Design Law

and How to Fix It, JIPITEC, (2013), 4(3), p. 232.

28 See below, part G.

CAD Files and European Design Law

2016

151

For the sake of clarity, it seems rather unrealistic

to assume, in the absence of a specic provision,

that digital items represented in the form of CAD

les could be seen as “products”, whose appearance

deserves protection in its own right. The denition

of “design” would need to be broadened in future

legislation in order to cover a wider range of

“immaterial” protectable elements.

III. CAD drawings as graphical

representations

40 Under current practice, the drawing component of

a CAD le may serve as a “graphic representation”

of the design for which protection is sought. The

following analysis attempts to clarify this point.

A person seeking protection for their design at

the EU level has the option to either apply for a

Registered Community Design (“RCD”) through the

EUIPO, before disclosing it, or, alternatively, opt

for an anti-copying right, relying on Unregistered

Community Design (“UCD”) protection.

In the former case, in order to have a valid

application for a RCD, Article 36 CDR requires to

include “a representation of the design that is

suitable for reproduction”. There are several ways

in which a design can be represented. The EUIPO

accepts drawings, photographs and computer-made

representations (i.e. CAD representations), either in

black or in colour, provided that they are of quality,

permitting all details of the design to be clearly

distinguished29.

Hence, it may well be that, in parallel with a

photograph, a CAD representation is used to disclose

the features of the design for which protection is

sought. By way of explanation, if the applicant

wishes to register the design of a table knife, rather

than afxing a photograph of such a knife, she can

afx the 3D representation, created by CAD software,

of the same household good. The applicant will then

have to indicate “knives” as the relevant product

category (class 7-03 of the Locarno classication)30.

However, in order to be of quality, a CAD

representation should enable to determine, with

clarity, the subject matter of the protection afforded

by the RCD to its holder. Hence, it should contain

clear and intelligible information about the sizes,

dimensions, and colours of the item in which the

29 EUIPO Guidelines, supra note 25, at 3.3.1.

30 The EUIPO has recently released an e-ling tool, called “3D

image uploader”, that allows the applicant to upload and

store its CAD les. The applicant can move the 3D image,

zoom in and out, take some pictures from different views,

and select between a maximum of 7 static views.

design is incorporated or to which the design is

applied.

Interestingly, a recent decision from the UK Supreme

Court, PMS International Group Plc31, is notable for

stressing the importance of the images afxed in

the application form, for determining the scope of

Community design protection. As noted by Lord

Neurberger, when it comes to deciding the extent

of protection afforded by a RCD, the question “must

ultimately depend on the proper interpretation of

the registration in issue, and in particular of the

images included in the registration”32. Therefore, it

will almost always be the images that “exclusively

identify the nature and extent of the monopoly”

which the applicant is claiming33.

The case concerned an alleged infringement of a

RCD, which consisted of six images prepared by CAD

software of an item (a ride-on animal suitcase) whose

main body appeared as a uniform grey, but which

had black strips in the front, a black strap on the

top and black wheels. After analysing these images,

it was not clear whether the two-tone colouring

on the CAD images – i.e. the contrast in colour

between grey and black – was simply an artefact

of the computer-generated process or a visual cue

to indicate that the wheels and the strap should be

considered as separate components. The problem,

therefore, was whether the RCD was to be considered

as protection for the shape only, or for the shape in

two contrasting colours. Only in the latter case, the

overall impression created by this contrast in colour

could be considered.

It might be, therefore, that CAD representations

depict some unnecessary tonal contrast. This, in

turn, could generate confusion and be understood

as limiting the scope of design protection to certain

colours only.

The application for a RCD should also indicate the

products in which the design in intended to be

incorporated or to which it is intended to be applied.

In this respect, it is worth noting that product

classication mainly serves administrative purposes

and does not affect the scope of design protection34.

Once the design is registered, it is protected against

any use in relation to any product that does not

produce a different overall impression on the

informed user.

49 Once the request for registration is led, the EUIPO

carries out an ex ofcio examination of the two

absolute grounds for non-registrability, set forth in

31 PMS International Group Plc v Magmatic Ltd [2016] UKSC 12.

32 Id., at 30.

33 Id., at 31.

34 EUIPO Guidelines, supra note 25, at 6.1.4.1.

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Viola Elam

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Article 47 CDR. Namely, the Ofce veries whether

the subject matter of the application corresponds to

the denition of a design foreseen in Article 3(a) CDR,

and whether or not it is contrary to public policy

and accepted principles of morality. Therefore,

the registration procedure is kept to a minimum.

Compliance with the novelty and individual

character requirements will only be examined at a

second stage if a third party submits an application

for a declaration of invalidity.

It should also be noted that the EUIPO examines

whether the appearance of the “product” is disclosed

in the light of the design itself. Whether the product

is actually made or used, or can be made or used, in

an industrial or handicraft fashion, is not taken into

consideration35. In fact, there is no requirement to

submit a specimen of the claimed RCD.

This, in turn, implies that a person can: create a CAD

le for a product by means of CAD software; include

in the application for a RCD an image taken from

such a CAD le; obtain a design registration covering

the product design represented therein, irrespective

of whether the product is actually manufactured or

not.

52 This leads to the outcome that, although the entire

regulatory framework in EU design law is structured

on the concept of “product”, a design is protectable

regardless of whether a product comes into existence

or not. Accordingly, legal protection does not depend

on whether designs represented as CAD models exist

as tangible articles or not.

C. Unregistered design

protection of CAD files

An Unregistered Community Design (“UCD”) is based

on the same substantive provisions postulating the

validity requirements for a RCD. The meaning of

“design”, “appearance” and “product” are the same

for both RCD and UCD. As a general matter, any

design capable of being registered at the EU level

could also benet from the protection granted to

UCD.

There are, however, substantial differences between

RCD and UCD. A RCD confers a true monopoly,

whereas an UCD grants the right to prevent any

commercial use of a design that is an intentional

copy of the protected one. Yet, it should not be

demonstrated that the alleged infringer acted in

bad faith. Furthermore, a RCD confers protection

for up to 25 years, subject to renewal each ve years,

whereas an UCD affords protection for only three

35 Id., at 4.1.

years.

Protection of the UCD commences from the date

on which the design has been “made available to

the public” within the EU. As Recital 16 CDR puts

forth, there is no need to register products having

a short market life. A designer can introduce a new

design testing the market and le an application for

registration at a second stage. In fact, the designer

is entitled to register her design within a 12-month

period (“grace period”) from the date of the rst

disclosure. In other words, in the event that the

designer les an application for a RCD, disclosure

during the year preceding the date of ling shall not

be taken into consideration when appraising novelty

and individual character of the design in question,

pursuant to Article 7(2) CDR.

56 Let us now assume that a CAD le for a product to

which a design is applied is uploaded onto a website

which is a 3DP marketplace or repository. This, in

turn, raises a number of questions. Should the act

of uploading a CAD le onto an online 3DP platform

be tantamount to a disclosure of the design to the

public, which triggers UCD protection? Has the

design been “made available to the public”, and

become known in the normal course of trade? Has

the 12-month grace period commenced?

The following part of this paper detects the

circumstances under which a design shall be

deemed to have been made available to the public.

The phrase “made available to the public”, for the

purposes of identifying the date on which UCD

protection commences, is dened under Article

11(2) CDR. This provision mirrors Article 7(1) CDR,

which claries when a design has been disclosed

for considering questions of novelty and individual

character, for both registered and unregistered

designs. In fact, all designs made available to the

public, prior to the relevant date (indicated at Article

5(1)(a)&(b) and 6(1)(a)&(b)), are to be taken into

account to determine whether a design is new and

if it has individual character. This, in turn, raises an

additional question: should we consider all the CAD

models that have been previously uploaded onto

3DP online platforms as antecedent designs in the

prior art?

58 It should also be noted that a disclosure should take

place within the territory of the European Union

in order to create an UCD. Hence, UCD protection

is not afforded to designs that have rst been

made available outside the EU. On the contrary,

this requirement is not imposed under Article 7

CDR, which denes the notion of disclosure that is

relevant for determining the state of the prior art.

CAD Files and European Design Law

2016

153

D. The concept of “made

available to the public”

Articles 7(1) and 11(2) CDR provide some guidance to

assess whether a design has been ‘made available to

the public’. This is the case if “it has been published

following registration or otherwise, or exhibited,

used in trade or otherwise disclosed”. The following

part of these provisions set forth the so-called “safe-

guard” clause, stipulating that a disclosure shall

not be taken into consideration if these events

(publication, exhibition, and use in trade) could

not have become known “in the normal course

of business to the circles specialised in the sector

concerned”, operating within the Community.

The EUIPO

’s case law from 2004 onwards allows

enough clearance on which acts constitute a

disclosure of a design to the public, which could also

become known in the normal course of business to

specialised circles.

A remarkable ruling that helps us to understand

better whether the publication of a CAD le on

an online platform would amount to a disclosure

to the public is the Board’s decision in Crocs, Inc. v

Holey Soles Holdings Ltd37. The holder of a RCD for

Crocs clogs, which was published in the Bulletin

of 8 February, 2005, conceded that the design had

already been published on www.crocs.com before

28 May, 2003. Nonetheless, the right owner argued

that such disclosure on the website did not destroy

novelty of the design in question, since it could not

have reasonably become known in the Community.

At that time, the website was unsophisticated and

virtually impossible to access. The website merely

functioned as an information tool for persons “who

might have learnt about the clogs from people

who had already bought them” and was not used

as a large mail order service. Websites that will be

regarded as a source of inspiration for developing

new designs are those of the established footwear

companies, such as Nike or Adidas, whereas Crocs Inc.

was not an established manufacturer at the relevant

date38.

The Third Board of Appeal dismissed the appellant’s

ndings. In the rst place, the Board found that the

Internet is a formidable information tool and is used

by designers in footwear as well as in other elds

as a resource in the development of their designs.

Moreover, Crocs website was an active website

36 Formerly called Ofce for Harmonization in the Internal

Market (“OHIM”).

37 OHIM Third Board of Appeal, decision of 26 March 2010 – R

9/2008-3.

38 Id., at 10(d).

already at that date and was congured to function

as a sales channel. Henceforth, the audience targeted

by the website was not only composed by those who

knew Crocs from before39.

Accordingly, when a design is published on a website,

it will per se be publicly disclosed and reasonably

become known in the normal course of business,

even if the circles specialised in the sector were not

aware of the website owner at that date

. This is

further conrmed in recent case law from the EUIPO.

As a matter of principle, information disclosed on

the Internet or in online databases forms part of the

prior art and is considered to be publicly available as

of the date the information was posted41.

Moreover, neither restricting access to a limited

circle of people (for example, by using password

protection) nor requiring payment for access (in the

same way as requiring a payment for subscribing to

a journal or purchasing a book) prevent a webpage

from being part of the prior art. The European circles

specialised in the sector concerned could reasonably

meet the accessibility requirement42.

A disclosure shall be deemed to be obscure and

irretrievable only in situations in which a design

disappears from mankind’s memory over time

and is available only in a local museum or traded

on a remote local market. This is not the case for

prior designs made available online. Users – either

the broad public or experts in a particular eld of

industry – use the service of web browsers, such as

Google or Yahoo, to search on the Internet. By using

keywords, they can easily nd websites dealing with

a particular subject matter. Therefore, once a design

is published on the Internet it becomes automatically

accessible and retrievable43.

67 For the purposes of applying Articles 5 and 6 CDR,

a disclosure could also take place outside the EU,

insofar as the design has become known in the

trade circles in the European Union. The question

of whether events taking place outside the EU could

reasonably have become known to persons forming

part of specialized circles in the EU is a question of

fact, dependent on the particular circumstances of

each individual case44. In theory, even where the

39 Id., at 85-92.

40 Suthersanen, supra note 20, p. 126.

41 OHIM Invalidity Division, Mariusz Adamski Adams Group

v Abakus Direct Ltd, decision of 10 July 2014, at 13. In the

present case the holder had disclosed its design on eBay

prior to the RCD’s ling.

42 OHIM Invalidity Division, Napco Beds B.V. v Leopold Meijnen

Oosterbaan, decision of 24 February 2015, at 13.

43 OHIM, Invalidity Division, Samsung Electronics CO. Limited et

al. v Apple Inc., decision of 05 July 2013, at 70-71.

44 See the CJEU’s ruling in H. Gautzsch GroBhanden GmbH & Co.

KG v Munchener Boulevard Mobel Joseph Duna Gmbh, C- 479/12,

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Viola Elam

154

design has been disclosed to a single undertaking

within the EU, a disclosure of that kind may, indeed,

be sufcient for that purpose45.

Making a design available overseas, therefore,

may destroy novelty on the basis that Article 7(1)

CDR is not geographically restricted to the EU.

On the contrary, the same disclosure taking place

outside the EU may not be sufcient to commence

UCD protection, given the territorial qualication

contained in Article 11(1) CDR46.

It is therefore maintained that, in principle, the act of

uploading a CAD le onto an online platform should

be a sufcient ground for “disclosing” the design

represented therein, for the purposes of applying

Articles 5 and 6 CDR. A CAD le is retrievable and

easily accessible by Internet users, including experts

in the eld. This might be the case for both CAD les

that have been made available to the public, subject

to a Creative Commons licence, and those offered for

sale in 3DP marketplaces.

It follows that whether the design is new and has

individual character would need to be considered,

taking into account the already-available body of

designs, including all antecedent CAD les that have

been previously disclosed. In other words, product

designs embedded in CAD les that have already

been distributed online will form part of the state

of the prior art47.

71 The publication of the CAD le on a EU website can

also trigger UCD protection from the date of the

rst online publication, if the criteria for protection

(i.e. novelty and individual character) are met. The

designer would then have the option to register the

design within one year.

An unsettled issue is whether UCD protection is

activated if the CAD le is rst uploaded onto a website

that is hosted outside the EU (such as Thingiverse). If

the website is easily accessible by European users,

a positive answer may appear as more appropriate

in light of the above-mentioned case law, which

focuses on the retrievability of Internet publications,

whereas a literal interpretation of Article 110a (5)

CDR may suggest the opposite.

at 34. See also OHIM Board of Appeal, Kirschenhofer GmbH v

WS Teleshop International Handles-GmbH, decision of 11 July

2007.

45 Id., H. Gautzsch GroBhanden GmbH, at 15.

46 See the decision of the German Federal Supreme Court of

October 9, 2008, Gebackpresse I ZR 126/06, [2009] GRUR 79.

47 More precisely, in order to pass the novelty and individual

character test, the design embedded in the CAD le shall

differ from all the designs made available before: the date

on which the le itself was published on the 3DP website,

with respect to UCD; the date of ling or validly claimed

priority, with respect to RCD.

It should also be noted that the CAD le made

available online should clearly reveal the outer

appearance of the product for which protection is

sought. Lacking a clear representation of the product

design, the act of publishing the CAD le on a website

will not constitute a relevant disclosure for the

purposes of Articles 7 and 11 CDR.

The option of making CAD les available online,

therefore, constitutes an interesting possibility

for those designers that want to prevent third-

parties from using their 3D models to obtain design

protection48. When the CAD le is disclosed, all later

designs will have to produce a different overall

impression on the informed user.

E. Requirements that a design has to

meet towards design protection

Articles 5 and 6 CDR state that a design has to be new,

has to have individual character, and must not fall

foul of any of the stipulated exceptions, in order to

enjoy design protection. These requirements will be

analysed in turn, focusing on the implications that

3DP carries.

I. Novelty and individual character

76 A design is new only when it differs materially from

everything that has been produced before. In fact,

Article 5(2) CDR states that differences between

two designs are irrelevant whenever they relate

to mere “immaterial details”. In this regard, the

novelty requirement is much closer to that for utility

patents, rather than the originality requirement

for copyright protection. It follows that users who

download already-existing CAD models from a 3DP

platform will have to modify them substantially in

order for their designs to be new.

In this respect, a critical issue that 3DP poses is

whether customized designs differ materially from

other designs that have been made available before.

Today, many companies, such as eMachineShop.com or

Shapeways, manufacture customized products based

on consumers’ CAD les. From an IP perspective, a

key issue is whether customized products provide

“added value” because they imprint true novelty,

or because they just enhance the value inherent in

the design of the core product. It may well be that

customized designs lack in novelty, since they differ

from the core product design in details that are

immaterial, banal or commonplace.

48 Margoni (2013), supra note 27, p. 241, at 113.

CAD Files and European Design Law

2016

155

Novelty and individual character overlap to a certain

extent. The main difference between these criteria

lies in the kind of examination carried out by the

EUIPO. When assessing novelty, the EUIPO makes a

comparison between the overall appearances of the

two designs. In contrast, when measuring individual

character, the EUIPO considers the overall impression

that the design produces on the “informed user”.

Therefore, any reference to the informed user is not

justied when assessing novelty. It is the Board’s

task to measure the differences between the designs

under examination on the basis of their overall

appearance49.

The test for individual character is less

straightforward and is likely to give rise to slightly

more subjective appraisals50. In Karen Millen

Fashions51, the CJEU held that, in order for a design

to be considered to have individual character, the

overall impression which that design produces

on the informed user must be different from that

produced on such a user “not by a combination of

features taken in isolation and drawn from a number

of earlier designs, but by one or more earlier designs,

taken individually”.

Therefore, the assessment as to whether the

product design embedded in a CAD le has

individual character must be conduced in relation

to individualised, dened and identied designs that

have been made available to the public previously.

81 Furthermore, in its recent decision in H&M Hennes &

Mauritz BV

, the CJEU held that the assessment of the

individual character of a Community design is the

result of a four-stage examination, which consists in

deciding upon: rst, the sector to which the products

belong; second, the identity of the informed user

of those products; third, the designer’s degree

of freedom in developing his design; fourth, the

outcome of the comparison of the designs at issue.

The designer’s degree of freedom cannot, on its own,

give rise to an outcome as regards the assessment of

individual character, but can only “reinforce” this

evaluation. The starting point should always be the

perception of the informed user.

The problem is how to carry out the four-stage

examination of the individual character requirement

with respect to CAD les. In order to be protectable,

a product design in the form of a CAD le should

49 OHIM Third Board of Appeal, Imperial International Limited v

Handl Cookware Limited, decision of 2 September 2008, at 11-

12.

50 OHIM Third Board of Appeal, Daka Research Inc. v Ampel 24

Vertiebs-GmbH & Co. KG, decision of 22 November 2006, at 20.

51 Karen Millen Fashions Ltd v Dunnes stores et al. C-345/13 ECDR

17, at 35.

52 H&M Hennes & Mauritz BV & Co. KG v OHIM – Yves Saint Laurent

(handbags) T-526/13, at 32-34.

produce an overall impression on the informed user

that differs from the impression produced by all

previous designs. Therefore, such a design will only

pass the individual character test if it differs from: a)

any CAD le for a product that has been previously

uploaded onto a 3DP platform; b) any product that

has already been marketed.

The situation is further complicated by the contention

that the informed user of an item represented as

a CAD le might need to be distinguished from

the informed user of the corresponding physical

product. Arguably, the former should be the user

of a 3DP platform, who wants to 3D print the item,

rather than the person who purchases the product

in a retail store.

Let us assume that a CAD le represents a bottle

opener, and that a later CAD le depicts a similar bottle

opener. In potential litigation, the informed user for

assessing the individual character requirement of

the disputed design could be: a private individual

who drinks wine; a professional (e.g. waiter or

sommelier); the user of a 3DP platform, who wants

to manufacture the bottle opener at home.

85 Therefore, a number of issues need to be addressed.

Who is the informed user of CAD les? How should

we evaluate the degree of freedom of the CAD le’s

designer? Will the individual character threshold

become less strict in the future if the market sectors

become overcrowded? The next paragraph suggests

some possible answers to these questions.

II. The “informed user” in the

3D printing landscape

For the purposes of this analysis, it is worth asking, in

the rst place, who would be the notional informed

user, if an increasing number of individuals engage

in the creation of CAD models and in digital-design-

le-sharing. Everyone can now design a product

from scratch by using CAD software. Users can also

download third parties’ CAD les and use online

tools to transform, adapt or recast the pre-existing

designs. Individual makers are both users and

designers. Hence, the following analysis suggests

that, if it becomes common practice that people

not only print but also design their own product at

home, the notion of informed user might need to be

revisited in the future. It argues that informed users

would tend to belong to the circles specialised in the

sector concerned, and resemble the “person skilled

in the art” in patent law.

The legal concept of “informed user” differs from

that of “average consumer” in EU trademark law.

The possibility of imperfect recollection on the

2016

Viola Elam

156

part of the average consumer plays a vital role

in trademark law, which is aimed at preventing

consumer confusion or deception. To the contrary,

design law protects the appearance of a product.

This implies that the informed user should not

merely half-remembering the articles but also have

a certain degree of familiarity with the item goods

in which the design is incorporated53.

Hence, according to established case law, the

informed user shall be particularly observant, aware

of the state of the art in the sector concerned, and

use the product related to the RCD in accordance

with the purpose for which the product is intended

The background knowledge of the items is certainly

higher than average, but not even too specic. She is

more than a mere consumer, but is less than a design

expert. Moreover, Lord Justice Jacob, in Procter &

Gamble Company v Reckitt Benckiser (UK) Limited55,

highlighted that the informed user is not the same

sort of person as the ‘person skilled in the art’ of

patent law. The equivalent to that person in the eld

of design would be some sort of average “designer”,

not a “user”.

Originally, the EUIPO’s Invalidity Division adopted

a rather different approach. The informed user was

found to be a person aware of the prior art known

in the normal course of business to “the circles

specialised in the sector concerned”. She does not

ignore the specic methods and techniques of

production56. For example, in a case concerning an

application for a declaration of invalidity of a RCD for

“wheels for bicycles”, the Invalidity Division found

that the informed user is aware of the requirements

that bicycle wheels must full in order to perform

their function. Therefore, the informed user also

“takes into account whether the degree of freedom

of the designer is limited by the requirement that a

wheel has to be laced with the spokes between the

hub and the rim and to transfer the weight of the

rider to the rim”57.

90 It thus seems that the notion of informed user was

once much closer to that of a design expert. The

Invalidity Division used to consider the informed

user as belonging the “circles specialised in the

53 Procter & Gamble Co v. Reckitt Benckiser (UK), Ltd [2007] EWCA

Civ 936, per LJ Jacob at 27.

54 Judgement of the General Court (First Chamber), 9

September 2011, in Case T-10/08, Kwang Yang Motor Co. Ltd. v

OHIM, at 23.

55 Supra note 53, at 16.

56 OHIM Invalidity Division, Eredu S. Coop v Arrmet S.r.l.,

decision of 27 April 2004, at 18: “in particolare, l’utilizzatore

informato non ignora lo stato della tecnica quale è

conosciuta nel corso della normale attività commerciale

negli ambienti specializzati del settore considerate”.

57 OHIM Invalidity Division, Rodi Commercial S.A. v ISCA S.p.A.,

decision of 30 August 2005, at 27.

sector concerned”. Nonetheless, as noted above, this

criterion should only apply when establishing what

is a relevant disclosure to the public, and potential

conicts with an already-existing design corpus,

under Article 7 CDR. The person of the informed

user, who is the reference for evaluating individual

character, shall not be part of any specialised circle,

lacking this sort or requirement in Article 6 CDR.

A correct interpretation of these two provisions

should be that a design is considered to have

individual character if the overall impression it

produces on the informed user differs from that of

an earlier design, which has already been disclosed

to the public. However, a design shall not be deemed

part of the prior art if not even the circles specialised

in sector concerned, operating in the territory of the

EU, are aware of its existence58.

Therefore, in a recent ruling, the Board of Appeal

found that the informed user of clogs is “neither the

manufacturer nor a seller of clogs, but the person who

wears clogs. Without being a designer or a technical

expert, the informed user knows the various designs

for clogs as a result of the relevant product range

offered in retail shops or over the Internet”59. In the

present context, footwear designers and footwear

industry, operating in the EU, represent the circles

specialised in the sector concerned.

93 This paper argues that 3DP may blur the distinction

between the notions of informed user and that of

design expert. Users may become more and more

aware of the specic methods and techniques of

production. If this is the case, one will have look at

early case law from the EUIPO in order to detect who

should be considered the informed user, in a new

ecosystem where the person of the designer and that

of the user conate to a greater extent.

III. How to evaluate the designer’s

degree of freedom

94 Following established case law from the EUIPO, the

designer’s degree of freedom is likely to be lower

if she has to comply with technical constraints.

Similarly, if a eld of application is already very

crowded, minor advances from the prior art might

produce a different overall impression on the

informed user60.

58 See, inter alia, opinion of Advocate General Wathelet, 5

September 2013, in case H. Gautzsch GroBhanden, supra note,

at 44.

59 OHIM third Board of Appeal, Hessy s.r.o. v Crocs, Inc., decision

of 14 September 2015, at 16.

60 By way of example, the OHIM third Board of Appeal, in

Man S.p.A. v Leng-D’Or S.A., decision of 4 November 2010,

at 20-21, found that the presence of so many shapes for

CAD Files and European Design Law

2016

157

95 On the one hand, when applying this reasoning to

3DP, one could maintain that the designer’s degree

of freedom will be gradually reduced. Assuming

that an increasing number of users and companies

will start producing and distributing their own

versions of CAD les, and that such les form

prior art, many market sectors will be thoroughly

soaked. If a specic sector is saturated, it inevitably

entails compromises, since minor differences in

the appearance of products might be enough to

lead to a different overall impression on the part of

the informed user. The appearance of a contested

design, therefore, might be very similar to that of an

earlier design and, nonetheless, lead to a different

overall impression.

Besides, it is worth considering that the designer

has to work within certain constraints in order to

make a 3D model suitable for printing. In the rst

place, there are some dimensional constraints.

The designer has to comply with height and size

requirements in order for the 3D printer to be used.

In other words, when designing the 3D model using

modelling software, the designer should take into

account that printed objects are limited by the

printers’ size

. Furthermore, a 3D model should have

a minimum thickness, at any given point (“minimum

wall thickness”), which depends on the material

used. Arguably, all of these technical constraints

limit the designer’s freedom.

On the other hand, one may argue that 3DP enhances

the designer’s freedom, since it enables the creation

of much more complex geometries, as opposed to

traditional manufacturing processes. Furthermore,

individuals have gained the capacity to design all

sorts of products with a relatively low experience.

It is also possible to nd tutorials on the Internet on

how to use modelling software, such as CAD software.

3D scanners enable the designer to digitize without

difculty any physical object. The newly-created 3D

model can then be modied, adapted and optimized.

Thus, it is questionable whether the designer’s

degree of freedom should be considered lower in 3DP

than in other design processes. This issue, however,

is dependant on whether the technology will or will

not become widespread. As noted above, for the time

being, individual users engaging in the creation and

“snacks items” is evidence of the broad possibilities open to

the designer and, at the same time, the limits thereof. The

designer freedom is not limitless, since the overcrowding

of the market sector and industrial feasibility of the goods

item determine much more constraint on a competing

company operating in the same market sector. Accordingly,

the designer’s degree of freedom was found to be average,

rather than broad or limitless, and implying a gradual

decline in the shapes that are still available.

61 It is however likely that in the future it will be possible to

produce 3D printed products in larger sizes.

sharing of CAD les mainly include 3DP enthusiasts.

F. Exceptions to Community Design

protection: the non-harmonisation

of the repairs clause

99 The scope of design protection for the appearance

of items represented as CAD les – and the

corresponding 3D-printed products – is narrowed

by a series of exceptions, set forth in the CDR. The

rst functionality exclusion, provided in Article

8(1) CDR, states that a Community design shall not

subsist in features of appearance of a product, which

are solely dictated by its technical function. Such

features shall not only be necessary, but essential

to obtain a technical result. Thus, the level of

functionality required is higher than that provided

under trademark law.

100

In a way, such exclusion emulates the idea and

expression dichotomy in copyright law. In fact,

in the 1991 Green Paper on the Legal Protection

of Industrial Design62, the European Commission

made clear that if the designer has a choice among

various forms, in order to arrive at the technical

effect, the features in question could be protected.

This, in turn, means that features of appearance

of a product, represented as a CAD le, will not be

granted protection if they are only indispensable

for achieving a specic technical result. It does

not follow, however, that the whole design will

automatically be denied protection.

101 Over and above the general exclusion of “technical

function”, Article 8(2) CDR provides the so-called

“must-t” exception or “interface” exclusion. This

exclusion is aimed at enabling technical replacement

products and ensuring mechanical interoperability.

Hence, no protection is given to those features that

must necessarily be reproduced in their exact form

and dimension in order to permit the product, in

which the design is incorporated, to be mechanically

connected to another product (for example, exhaust

pipes or coupling sleeves are examples of “must t”

designs in the automotive industry). This permits

the possibility that either product may perform its

function.

102

This provision turned out to be rather redundant,

insofar as spare parts, which are not visible in

normal use63, and those that are solely dictated by

their technical function, are anyway excluded from

design protection64.

62 At 5.4.6.2.

63 See Article 4(2)(a) CDR.

64 Both the functionality and the must-t exclusions do not

2016

Viola Elam

158

103

One of the most problematic issues the EU legislators

had to face concerns the so-called “must-match”

exclusion65. This exclusion deals with the visual

synchronisation and aesthetic appearance of a

complex product, rather than with functionality. In

other terms, the must-match provision concerns the

design of a component part, which should be used for

the purpose of the repair of a complex product so as

to restore its original appearance (e.g. the design of

a car body panel that is used to restore the original

appearance of the vehicle).

104

The protection of must-match spare parts has

occasioned the greatest controversy among a wide

range of stakeholders, especially in the automotive

industry. The following analysis provides a brief

overview of the legislative history on this issue. This

will help explain why the dispute is not resolved yet.

105

The original idea in the 1993 proposals for a

Regulation on the Community design66, and for a

Directive on the legal protection of designs

, was

to introduce a must-match exception in Europe,

specifying that only after a period of three years,

from the rst placing on the market of a complex

product, the rights conferred by a RCD could not be

exercised to prevent third parties from using the

design of a component part, in order to restore the

original appearance, or to permit the repair of, the

complex product. The Council of Ministers rejected

this option.

106

The European Parliament advanced a different

solution in the Amended Proposal for the Design

Directive, opting for a compulsory licensing regime

that allowed the use of component parts, for repair

purposes, immediately after the placing on the

market of the complex product, in exchange for a fair

and reasonable remuneration of the right holder68.

apply to design features which allow the multiple assembly

or connection of mutually interchangeable products within

a modular system (Recital 11, Article 8(3) CDR). Hence,

design subsists in interconnection features of construction

toys or modular furniture. Cornish et al., in Intellectual

Property: Patents, Copyright, Trade marks and Allied rights, 7th

edn Sweet & Maxwell (2007), p. 613, maintain that the special

treatment offered to toy manufacturers has no reasonable

explanation, except that it shows how determined lobbying

can squeeze special concessions into legislation.

65 The “must-match” terminology comes from the UK

legislation on UK Unregistered Design Rights. Such

exception was rst introduced within the UK Community

Designs and Patents Act 1988.

66 Proposal for a European Parliament and Council Regulation

on the Community Design, COM (93) 342 nal-COD 463, 3

December 1993, Article 23 of the Draft Regulation.

67 Proposal for a European Parliament and Council Directive

on the Legal Protection of Designs, COM (93) 344 nal-COD

464, 3 December 1993, Article 14.

68 Amended Proposal Design Directive [1996] OJ C1 42/7,

Article 14.

Manufacturers of component parts were required to

inform the public as to the origin of their products

used for the repair by means of a trademark or trade

name. They also had to notify the right holder of

the intended use of the design, and regularly inform

her as to the scale of such use. Nonetheless, no

agreement on the compulsory licensing clause was

reached by the European Council.

107

Ultimately, the disagreement between EU institutions

was the subject of a Conciliation Committee meeting,

where the Council insisted on its position against

a remuneration scheme. It recommended, instead,

an extension of the period of exclusivity over

component parts for a period ranging from three

to seven years.

108 In such a tense context, the European Union opted

for the so-called “freeze plus” solution, stating that

until amendments to the Directive are adopted on

a proposal from the Commission on this subject,

Member States shall maintain in force their existing

legal provisions. Member States should only change

their laws if they wished to liberalise their market

for spare parts, pursuant to Article 14 Directive

98/71/EC. Therefore, Member States had alternative

options: they could introduce a clause allowing

any use of the design for repair purposes; adopt a

remuneration system; provide a term-limited design

protection; or craft their own exception, which is a

combination of the second and third options.

109

Article 110 CDR codied another “freeze plus” or

transitional provision, mirroring the one set forth

in the Directive. Thus, in 2004 the Commission

made its third attempt to achieve harmonisation in

this convoluted area, issuing a proposal designed

to liberalise the aftermarket for spare parts69. This

proposal, known as the “repairs clause”, purported to

increase legal certainty and allow market operators

and consumers to take full advantage of a uniform

Internal Market for spare parts70.

110 In fact, the situation at that time was characterised

by opposed regimes, where nine Member States,

including Italy and the UK, have liberalised, whereas

sixteen Member States had de jure design protection

to spare parts (among them, Austria, Denmark,

Finland, Germany, Portugal, Sweden). The European

Commission found that the status quo – with mixed

protection regimes of design protection for spare

parts – was altogether unsatisfactory and created

trade distortion in the Internal Market71. The non-

69 European Commission (2004), Proposal for a Directive of the

European Parliament and of the Council amending Directive

98/71/EC on the Legal Protection of Designs: Extended

Impact Assessment.

70 Id., at 2.

71 Id., at 1.1.1.

CAD Files and European Design Law

2016

159

harmonisation of the must-match exclusion means

that independent manufacturers are only able to

sell their products and offer their services in some

Member States but not in others.

111 Following a lack of progress at Council level, in May

2014 the proposal was withdrawn. Successively, the

Commission launched a comprehensive legal and

economic evaluation of the overall functioning of EU

design systems72. In the framework of this evaluation,

an external contractor, Europe Economics, presented

“The Economic Review of Industrial Design in

Europe”73. The latter suggests that, among various

policy options, full liberalisation, meaning a complete

elimination of design protection for spare parts

within the EU, would be the best outcome. In an age

of widespread availability of 3D printers, consumers

and independent manufacturers think that they are

entitled to produce their own 3D-printed spare parts

for the purpose of repair. Hence, a de facto repairs

clause might become inevitable anyway. Insofar

as it is impossible to enforce design law against all

infringers in the 3DP landscape, a full liberalisation

has to take place.

112

In response to this argument, one could maintain

that 3DP makes the introduction of a repairs clause

a more delicate issue than it was in the relatively

recent past, because 3D printed products might not

meet quality and safety standards. Any proposal

for full liberalisation should foresee a method to

ensure that component parts are safe and useable,

when it becomes possible for different industries to

manufacture spare parts using 3DP.

113

In a study commissioned by the UK Intellectual

Property Ofce (“IPO”), Reeves and Mendis stressed,

in this regard, that it is rather unrealistic to assume

that 3DP will be heavily used, in the near future,

to make component parts in certain industrial

sectors, such as the automotive aftermarket74. The

component parts that, according to the UK IPO’s

study, are not yet suited to additive manufacture

include: tyres, batteries, oil lters, air conditioning,

etc. There are also aftermarket parts whose

manufacture is technically possible by means of 3DP,

but not economically viable yet, since the production

costs would be higher than the current aftermarket

value. The latter include: exhaust pipes, distributor

caps, water pumps, and radiators75.

72 See

industrial-design/protection/index_en.htm>.

73 Europe Economics, The Economic Review of Industrial Designs

in Europe, a study commissioned by DG Internal Market and

Services (January 2015).

74 Reeves, Mendis, report commissioned by the UK IPO, The

Current Status and Impact of 3D Printing Within the Industrial

Sector: An Analysis of Six Case Studies (March 2015), p. 19.

75 Id., p. 17.

114

As noted by the authors, one of the biggest limitations

to the production of 3D printed spare parts lies in the

lack of credible design data from which to print. In

the Ofce’s opinion, it is erroneously “assumed that

parts can be simply scanned and reverse engineered,

with the resulting data then being stored on the

cloud” for downstream 3DP. It is of fundamental

importance to have access to the original CAD les,

to understand “issues such as tolerances, loading

conditions and material requirements”.

115

Hence, whether the impact of 3DP on the liberalisation

of the aftermarket sector will be signicant in the

next future is not altogether clear yet76.

116

For the sake of completeness, it is also worth recalling

a recent Order from the CJEU in Ford Motor Company v

Wheeltrims s.r.l.77, dealing with trademark law.

117

At rst instance, in the Italian proceedings, the

claimant Ford Motor Company claimed that the

defendant, a company operating in the automotive

aftermarket, had infringed its registered trademark

“Ford”. Wheeltrims was marketing wheel caps

bearing the registered trademarks of the original

manufacturers – including Ford’s trademark –

without the owners’ authorisation. The defendant

raised the repairs clause defence, arguing that

Article 241 of the Italian Industrial Property Code,

implementing Article 14 of the Design Directive,

should apply as a defence to trade mark infringement.

The use of the trademark “Ford” was justied for the

purpose of restoring the original appearance of the

complex product, in derogation of the Trade Mark

Regulation (EC) 207/2009 and Trade Mark Directive

84/104/EC. The Tribunale Ordinario di Torino made

a reference for a preliminary ruling to the CJEU on

the interpretation of the repairs clause set forth in

the DD and CDR.

118

The CJEU answered the referred questions by Order,

stating that Article 14 of DD and Article 110 CDR must

be interpreted as not allowing – by way of derogation

from the provisions of the Trade Mark Directive

2008/95/EC and Trade Mark Regulation 2009/207/

EC– a manufacturer of replacement parts and

accessories for motor vehicles to afx to its products

a sign, which is identical to a trademark registered

for such products by the original manufacturer,

without the latter’s authorisation, on the ground

that the use thus made of the trade mark is the

only way to restore the original appearance of the

complex product.

119 Hence, the CJEU has made clear that, in its current

76 According to Reeves and Mendis it will not be signicant for

the next 10 years. Id., p. 20.

77 Order of the CJEU (Third Chamber) of 6 October 2015, Case

C-500/14.

2016

Viola Elam

160

form, the repairs clause that is anchored in European

design law does provide a defence to an alleged

trademark infringement. As a result, a third party

who replicates by means of 3DP a component part, to

which the manufacturer’s own trademark is afxed,

may be found liable for trademark infringement,

provided that the private use exception does not

apply78.

G. Exclusive rights conferred

by a design

120

In the event that a design is registered, the holder of

a RCD is granted an exclusive right to use it and to

prevent any third party not having her consent from

using it. Pursuant to Article 19 CDR, the right to use

the design covers different sorts of activities, such as

the making, offering, putting on the market or using

of a “product” in which the design is incorporated.

In contrast, an UCD confers the right to prevent the

same aforementioned activities, but only insofar as

the contested use results from copying the protected

design, and is not the result of an independent work

of creation.

121

The owner’s exclusive rights extend towards any

third party, without any differentiation between

primary and secondary infringers. This, in turn,

implies that the holder of a RCD can pursue claims

for direct infringement against intermediaries (e.g.

online 3D platforms).

122

Furthermore, as already mentioned, infringement

is not conned to the use of the design on the same

product, in which the design was incorporated in

the rst place. Protection extends toward any use

of the design, in relation to any products. It is also

worth remembering that infringement cannot

occur with respect to acts done privately and for

non-commercial purposes79, and acts done for

experimental purposes (Article 20 CDR).

123

In light of the above considerations, the question

of whether 3D printing a design-protected product

from a CAD le constitutes or not an infringing

activity is straightforward. There is no doubt that the

acts prohibited under Article 19 CDR will encompass

the manufacture of objects via 3DP, that is done in

the context of a commercial activity and outside the

78 According to Article 10 of Directive 2015/2436/EC, in

order to commit an infringement the use of a third party’s

trademark should be “in the course of trade”, i.e. in the

context of a commercial activity with a view to economic

advantage and not as a private matter. See the CJEU’s ruling

in Arsenal Football Club plc. v Reed, C-206/01 [2002] ECR

I-10273, [40].

79 These criteria are cumulative. Use should be both private

and for purposes that are not commercial.

scope of the private use exception (i.e. “making”

the design)

. Infringement will not be actionable,

instead, against an individual, who 3D prints a design

product at home, for private and personal use.

124 Moreover, the fabrication of products, by means of

3DP, done for scientic research will be exempted,

irrespective of whether it is for a private or

commercial purpose81. As noted by Suthersanen,

this exception should be interpreted narrowly and

be only allowed if the experimental usage of the

design is in the general interest. A demarcation

should always be made between acts of experimental

nature, and those that seek to exploit the design82.

125 Whether the scope of design protection should also

include the act of making a scanned representation

and/or a CAD le from a design already existing

as a tangible article is less clear-cut. Also, does the

unauthorized act of copying and marketing a third

party’s CAD le, in which a design is incorporated,

amount to infringement of the design right?

126 The unsolved issue, therefore, is whether activities

carried out in relation to CAD les fall foul of Article

19 CDR, and constitute an illegitimate “use” of the

design. Moreover, who is the party responsible for

the infringement: the one who uploads, downloads

or markets the CAD le? Should the host of the le-

sharing site be held liable too?

127

A strict interpretation of the law would suggest that

the answer to these questions should be no. Just as a

design requires there to be a product, infringement

should only occur where a person uses a physical

product83. The latter should not necessarily be the

same product to which the design was incorporated

in the rst place, but it should however be an

industrial or handicraft item.

128 Furthermore, the CDR does not provide protection

against indirect use of a design, differently from

patent law. There is no specic provision that confers

on the holder of a Community design the right

to prevent third parties, not having her consent,

from supplying the “means” for using the design

(e.g. marketing a complete kit that, when made up,

constitutes the design)84. A CAD le could be seen as

a “means” enabling the fabrication of the product in

which the design is incorporated. As a consequence,

80 See Malaquias, The 3D Printing Revolution: an Intellectual

Property Analysis (8 August 2014), available at:

papers.ssrn.com/sol3/Papers.cfm?abstract_id=2495416>.

81 Article 20(1)(b) CDR.

82 Suthersanen (2010), supra note 20, p. 140.

83 Bently, Sherman, Intellectual Property Law, 3rd ed., Oxford:

OUP (2008), p. 666.

84 See Article 30 of the Convention for the European Patent

for the Common Market (Community Patent Convention)

76/76/EEC.

CAD Files and European Design Law

2016

161

making and distributing a CAD le would constitute

an authorized (indirect) use of the design85.

129

Therefore, a crucial issue to address is the extent

to which a design right can be used against a new

form of exploitation that does not imply the making

of physical objects, but the creation and sharing of

digital les.

130

It is here suggested that conning the scope of

design protection to use on material products only

is overly restrictive, in the light of the current

technological change brought about by 3DP. This

technology is blurring the line between the physical

and the immaterial worlds. An increasing number

of undertakings might decide to make their CAD

les available online in the course of their business.

Digital networks might emerge as an ordinary means

of distributing 3DP templates of protected designs.

In this way, undertakings would not need to mass-

produce or distribute their products any longer.

131 Once a design is made available in the form of a CAD

le, it then becomes extremely easy for anyone to

replicate it, either by entrusting a third party with

the task of printing the product, or by using personal

hardware. Future advancements in personal 3D

printers will further expand this capability. Hence,

design-based industries have to be equipped for

the digitalization of things. In order for alternative

business practices to come to light, it is of utmost

importance to ensure that material protected by an

IP is respected.

132 This, in turn, calls for a reinterpretation of the legal

basis on which right holders shall receive protection.

Arguably, they should be exclusively entitled to use

– and prevent third parties from using and dealing

with – the CAD les of their protected designs.

133

There are several ways to address this issue.

A rst option would be to consider the digital

representation of a design as a “product” within

the meaning of Article 19 CDR. Accordingly, this

provision would cover different activities, such

as the unauthorized making of CAD les (i.e. the

making of a product), sharing of CAD les with other

Internet users (i.e. use of the design), and the sale

of CAD les on 3DP marketplaces (i.e. offering the

product and putting it on the market). Furthermore,

a possible interpretation of Article 20 CDR would be

that the private use exception exempts from liability

a third party who simply downloads a CAD le and

saves it on her computer.

134

One may support this conclusion arguing that

requiring products to have some physical form would

85 Bently, Sherman (2008), supra note 83, p. 666.

be unduly limiting

. From a systemic perspective,

it seems rather contradictory to allow registration

of graphic symbols – including computer icons –

and, at the same time, postulate that the notion

of “product” is tied to a physical dimension for

infringing purposes.

135 Furthermore, the scope of design protection is not

limited to a certain category of products; rather, it

covers any use of the design, in relation to “any”

product that does not produce on the informed

user a different overall impression. As noted by

Malaquias, it seems very difcult to ascertain that

a CAD le “will produce on the informed user a

different overall impression from the protected

design, considering that its purpose is to replicate

the existing design in three-dimensions”87.

136 In the opinion of the present writer, the preferable

solution is to follow the recommendation, made

by the European Commission in the “Legal Review

on Industrial Design Protection in Europe”88, to

introduce an infringement provision stating that

the creation of a design document amounts to an

infringing use89.

137

As suggested by the European Commission, a

template for such provision may be Section 226(1)

of the UK CDPA 1988, which states that “the owner

of a design has the exclusive right to reproduce

the design for commercial purposes [...] by making

a design document recording the design for the

purposes of enabling such articles to be made”.

138

In the UK jurisdiction, “design document” is

dened in Section 51(3) CDPA as: “any record of a

design, whether in the form of a drawing, a written

description, a photograph, data stored in a computer

or otherwise”. The scope of this provision is wide

enough to include CAD les as design documents90.

139

Furthermore, EU design law could fashion an

additional provision similar to Section 226(3) CDPA

1988, specifying that it is a primary infringement

of a design right to do or “authorise” another to

do, without the design right owner’s permission,

86 This expression is used by Bently and Sherman, id., p. 667,

footnote 66.

87 Malaquias (2014), supra note 80, p. 27.

88 MARKTD2014/083/D.

89 Id. 133.

90 It should however be borne in mind that in the UK

in a design document (i.e. in the CAD le) will not infringed

by making a 3D article from it, where the design is for

anything other than an artistic work or a typeface. Hence,

if a CAD le embodies a utilitarian design (for example,

the design of automotive spare parts), printing the object

will not result in copyright liability. In this respect, the UK

model would not be a good model to replicate for the EU.

2016

Viola Elam

162

anything which is the exclusive right of the design

right owner.

140

In the rst place, this provision would clarify

that making a CAD le from an existing design-

protected product, for the purposes of 3D printing

such product, amounts to an infringement of the

design right. This provision would also specify that

intermediary parties (such as 3DP online platforms)

might also be directly liable for “authorising” design

infringement. As stressed in the Commission’s

review, the benet of such a provision is that

neither actual nor constructing knowledge would

be required for a positive nding of infringement91.

H. Conclusions

141

A clear message emerges from the arguments

developed in this paper. European design law

should adapt to the reality of digitized goods and

accommodate greater protection for right owners.

142

To date, the EUIPO accepts 3D digital representation

of designs as “representations of the design that are

suitable for reproduction”, within the meaning of

Article 36 CDR. Such a representation is enclosed

in the application form for a RCD to show, in the

same way as a photograph, the design for which

protection is sought.

143

It has also been noted that, although the CDR is

structured on the concept of “product”, the EUIPO

does not take into consideration whether a product

is actually made or used, or can be made or used, in

an industrial or handicraft fashion. This, means that,

in theory, the CAD representations included in the

application for a RCD will determine the scope of

design protection, regardless of whether the product

is actually manufactured or not.

91 As an alternative remedy, the European Commission

proposes to introduce “indirect design infringement” as a

separate head of liability. As noted above, a CAD le may

be seen as a “means” that enables the actual infringement

of the design right, i.e. as an “indirect” use of a design.

In addition, the European Commission focuses on the

possibility to review the private and non-commercial use

exception. One way to restrict the scope of this exception

is to employ the 3-step language adopted in Article 26

of the TRIPs Agreement (“provided that such exceptions

do not unreasonably conict with the normal exploitation of

protected industrial designs, and do not unreasonably prejudice

the legitimate interests of the owner of the protected design,

taking account of the legitimate interests of third parties”), in

order to provide greater exibility and achieve a balance

between the legitimate interests involved. The latter

recommendation does not seem advisable. The language

employed in the three-step test may lead to ambiguity and

to a non-uniform interpretation. Rather than representing

a useful tool, it may create additional confusion. Cf. 6.1 of

the report (MARKTD2014/083/D).

144

It has also been contented that in case a CAD le

clearly unveils the outer appearance of a product,

its publication online will be tantamount to a

“disclosure” for the purposes of Article 7 CDR. As a

consequence, all later products – and CAD les for

products – will have to produce a different overall

impression on the informed user. By contrast, it is

not entirely clear whether publishing a CAD le on

a website that is hosted outside the EU will trigger

UCD protection from the date of the rst online

publication, given the geographical limitation

contained in Articles 11 and 110(a) 5 CDR.

145

Hence, there are many issues that have to be

claried. First, who is the informed user of a product

represented digitally as a CAD le, as opposed to the

informed user of the nished product? Second, is the

designer’s degree of freedom enhanced or limited

by the fact that she creates a product design using

CAD software? Third, if many individuals begin to

create their own CAD les for products and upload

them online, thereby disclosing the design for which

protection is sought, will many market sectors

suddenly become overcrowded? Will all subsequent

designs have to depart from the considerable amount

of CAD models already made available online?

146

Besides, the ease of converting a CAD le into a

physical item leads us to suggest that design owners

should be entitled to claim protection for the CAD

representations of their designs. In a hypothetical

world of widespread 3D printers, it could be that

CAD les become almost interchangeable with

end products. The owner of a CAD le might be as

satised as if she possesses the end product itself. A

CAD le would then serve as a substitute for a good,

offered to the same or actual potential customers.

147

Many are the elds in which clear-cut rules are

needed, since new technologies empower the

individual in her creativity and yet should make

her responsible for potential infringement of third

parties’ exclusive rights.

148

In this respect, the present writer supports the

following recommendations, made by the European

Commission in its recent report “Legal Review on

Industrial Design Protection in Europe”: rst, to

introduce a provision that confers upon the design

right owner an exclusive right to make a design

document, which is a record of the design (i.e. a

CAD le); second, to introduce a provision on direct

primary infringement by authorisation.

* Viola Elam is a Ph.D. Researcher at the European University

Institute, Fiesole, Italy. She is very grateful to an anonymous

referee for insightful comments.

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Over 100 Countries

Search over 120 million documents from over 100 countries including primary and secondary collections of legislation, case law, regulations, practical law, news, forms and contracts, books, journals, and more.
Thousands of Data Sources

Updated daily, vLex brings together legal information from over 750 publishing partners, providing access to over 2,500 legal and news sources from the world’s leading publishers.
Find What You Need, Quickly

Advanced A.I. technology developed exclusively by vLex editorially enriches legal information to make it accessible, with instant translation into 14 languages for enhanced discoverability and comparative research.
Over 2 million registered users

Founded over 20 years ago, vLex provides a first-class and comprehensive service for lawyers, law firms, government departments, and law schools around the world.

Subscribers are able to see any amendments made to the case.

You can sign up for a trial and make the most of our service including these benefits.

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Why Sign-up to vLex?

Over 100 Countries

Search over 120 million documents from over 100 countries including primary and secondary collections of legislation, case law, regulations, practical law, news, forms and contracts, books, journals, and more.
Thousands of Data Sources

Updated daily, vLex brings together legal information from over 750 publishing partners, providing access to over 2,500 legal and news sources from the world’s leading publishers.
Find What You Need, Quickly

Advanced A.I. technology developed exclusively by vLex editorially enriches legal information to make it accessible, with instant translation into 14 languages for enhanced discoverability and comparative research.
Over 2 million registered users

Founded over 20 years ago, vLex provides a first-class and comprehensive service for lawyers, law firms, government departments, and law schools around the world.

Subscribers are able to see a visualisation of a case and its relationships to other cases. An alternative to lists of cases, the Precedent Map makes it easier to establish which ones may be of most relevance to your research and prioritise further reading. You also get a useful overview of how the case was received.

Request your trial

Why Sign-up to vLex?

Over 100 Countries

Search over 120 million documents from over 100 countries including primary and secondary collections of legislation, case law, regulations, practical law, news, forms and contracts, books, journals, and more.
Thousands of Data Sources

Updated daily, vLex brings together legal information from over 750 publishing partners, providing access to over 2,500 legal and news sources from the world’s leading publishers.
Find What You Need, Quickly

Advanced A.I. technology developed exclusively by vLex editorially enriches legal information to make it accessible, with instant translation into 14 languages for enhanced discoverability and comparative research.
Over 2 million registered users

Founded over 20 years ago, vLex provides a first-class and comprehensive service for lawyers, law firms, government departments, and law schools around the world.

Subscribers are able to see the list of results connected to your document through the topics and citations Vincent found.

You can sign up for a trial and make the most of our service including these benefits.

Request your trial

Why Sign-up to vLex?

Over 100 Countries

Search over 120 million documents from over 100 countries including primary and secondary collections of legislation, case law, regulations, practical law, news, forms and contracts, books, journals, and more.
Thousands of Data Sources

Updated daily, vLex brings together legal information from over 750 publishing partners, providing access to over 2,500 legal and news sources from the world’s leading publishers.
Find What You Need, Quickly

Advanced A.I. technology developed exclusively by vLex editorially enriches legal information to make it accessible, with instant translation into 14 languages for enhanced discoverability and comparative research.
Over 2 million registered users

Founded over 20 years ago, vLex provides a first-class and comprehensive service for lawyers, law firms, government departments, and law schools around the world.

CAD Files and European Design Law

You can sign up for a trial and make the most of our service including these benefits.

Why Sign-up to vLex?

Over 100 Countries

Thousands of Data Sources

Find What You Need, Quickly

Over 2 million registered users

You can sign up for a trial and make the most of our service including these benefits.

Why Sign-up to vLex?

Over 100 Countries

Thousands of Data Sources

Find What You Need, Quickly

Over 2 million registered users

You can sign up for a trial and make the most of our service including these benefits.

Why Sign-up to vLex?

Over 100 Countries

Thousands of Data Sources

Find What You Need, Quickly

Over 2 million registered users

You can sign up for a trial and make the most of our service including these benefits.

Why Sign-up to vLex?

Over 100 Countries

Thousands of Data Sources

Find What You Need, Quickly

Over 2 million registered users

You can sign up for a trial and make the most of our service including these benefits.

Why Sign-up to vLex?

Over 100 Countries

Thousands of Data Sources

Find What You Need, Quickly

Over 2 million registered users

Why Sign-up to vLex?

Over 100 Countries

Thousands of Data Sources

Find What You Need, Quickly

Over 2 million registered users

You can sign up for a trial and make the most of our service including these benefits.

Why Sign-up to vLex?

Over 100 Countries

Thousands of Data Sources

Find What You Need, Quickly

Over 2 million registered users