Migrating a brand's design portfolio in response to the EU design reform requires a systematic review of existing registrations, an assessment of new filing opportunities under Regulation (EU) 2024/2822, and careful timing around the Phase I and Phase II implementation dates. For businesses operating in or through Germany, the process also intersects with national design rights administered by the DPMA, whose governing framework will be updated once Germany transposes Directive (EU) 2024/2823 by the December 2027 deadline. This illustrative scenario – based on patterns typical of cross-border IP matters – sets out a practical approach to that migration, the complications that commonly arise, and the lessons that transfer to comparable portfolios.
Editorial note: The matter described below is an illustrative scenario constructed from typical instructing patterns. It does not represent a specific client, transaction or outcome. No amounts, results or client-identifying details are presented as real.
Client Profile and Challenge
The hypothetical client is a mid-sized consumer goods manufacturer incorporated as a GmbH in Germany, with a portfolio of approximately forty registered designs spanning packaging, graphical user interfaces (GUIs), animated brand elements, and physical product forms. The portfolio had accumulated over several years through separate national filings at the DPMA and Community Design registrations at the EUIPO – now reclassified as Registered EU Designs (REUDs) under the reformed terminology introduced by Regulation (EU) 2024/2822.
The core challenge was threefold. First, the client's older GUI and animation-based registrations had been filed under the pre-reform framework, which did not expressly accommodate dynamic or interactive design elements within a single representation. Second, the product range included spare parts for domestic appliances, an area directly touched by the new permanent repair clause for must-match components. Third, the portfolio was spread across multiple Locarno classification classes without a coherent cross-class strategy, creating gaps in coverage and redundant filings that inflated maintenance costs.
These issues converged precisely as Phase I of the reform took effect on 1 May 2025, creating immediate practical questions: which existing rights remained adequate, which needed supplementation, and how should future filings be structured in anticipation of Phase II from 1 July 2026.
Strategy and Rationale
The advisory team structured the engagement around three parallel workstreams: portfolio audit, new filing strategy, and risk containment around the repair clause.
The portfolio audit classified each existing registration by (a) whether it covered a type of design now expressly within the broader statutory definition – animation, GUIs, typefaces, logos – and (b) whether its graphical representations would satisfy the new electronic and 3D representation requirements entering force at Phase II. Registrations that were substantively adequate but formally deficient in their representations were flagged for supplementary or parallel filings timed to the Phase II window. This was particularly relevant for animated brand marks, where the pre-reform static image approach did not convey motion sequences now recognisable as part of the design.
The new filing strategy took full advantage of the multiple-application procedure across Locarno classes introduced by Regulation (EU) 2024/2822, consolidating what had previously required separate applications into single, class-spanning submissions. This reduced administrative overhead and created a cleaner audit trail for any future IP litigation that might turn on the scope or priority date of individual rights.
The repair clause workstream required a more nuanced analysis. The permanent repair clause exempts third-party spare parts for must-match components from design right infringement, provided the part is used solely to restore the original appearance. For the client's appliance components, counsel mapped each affected part against that condition, identified which components genuinely fell within the exemption, and advised on product lines where design protection remained commercially meaningful. This analysis also informed a review of trade mark registrations covering the same product shapes, ensuring that overlapping rights were not inadvertently weakened by mischaracterising components as must-match when they were not.
If you are assessing a similar portfolio and would like to discuss the interaction between design rights, trade mark protection and the repair clause, our IP team is available at info@ferrazwhitmore.com or through our contacts page.
Milestones
The engagement unfolded across three defined phases, aligned to the legislative timetable:
- Pre-1 May 2025: Completion of the portfolio audit and classification of all existing REUDs and DPMA national registrations. Preparation of a priority matrix distinguishing rights to be maintained as-is, rights to be supplemented before Phase II, and rights to be abandoned at the next renewal window.
- Post-1 May 2025 – Pre-1 July 2026: Filing of multiple-class applications for consolidated GUI and animation-based design families. Submission of new RUED applications capturing animated representations in formats compatible with the forthcoming Phase II technical requirements. Parallel review of national DPMA filings in light of Directive (EU) 2024/2823, noting that Germany's transposition period runs until 9 December 2027 and that certain procedural aspects of national rights therefore remain subject to the current national framework pending legislative implementation.
- From 1 July 2026 onwards: Activation of the new design representation regime and procedural rules under the EU Design Implementing and Delegated Regulations. Submission of electronic and 3D format representations for newly prioritised product lines, and ongoing monitoring of DPMA guidance as Germany's national transposition work progresses.
Complications Encountered
Three complications arose that are worth highlighting for their broader applicability.
The first was classification ambiguity for multi-function interfaces. Several GUI designs served both as graphical interfaces for physical products and as screen displays within a software application distributed independently. The question of whether a single RUED application could adequately cover both functions required careful analysis of the broader definition introduced by the reform, and in some instances resulted in parallel filings to avoid arguments about scope in potential copyright infringement or design infringement proceedings.
The second complication was timing pressure around text and data mining. The client used automated tools to monitor third-party design filings and detect potential conflicts – a process that implicated text and data mining provisions under applicable EU legislation. Ensuring that the design-watching service operated within permissible parameters required coordination between the IP practice and the client's technology and compliance teams, and is a detail that is easy to overlook in a portfolio migration focused primarily on registration strategy.
The third complication was the interaction with the Handelsregister record. Two of the design-owning entities in the group had undergone restructuring, and the registered design assignments had not been consistently recorded. Before new filings could proceed in the correct legal name, confirmatory assignments and updated Handelsregister entries were required. This administrative step added lead time that had not been anticipated in the initial project plan.
Outcome Category
By the time Phase I took effect, the consolidated portfolio was materially cleaner: redundant registrations had been identified for non-renewal, the multiple-class filing structure was in place for core design families, and the repair clause analysis had been completed with documented conclusions. The Phase II preparation work – particularly for animated and 3D representations – was in progress, with applications timed to coincide with the 1 July 2026 regime. National DPMA strategy remained subject to ongoing review pending Germany's transposition of Directive (EU) 2024/2823.
For a broader overview of design registration and enforcement options available in Germany, including post-reform considerations, see our intellectual property services page for Germany.
Three Transferable Lessons
1. Audit before you file. The instinct in a major reform is to begin filing immediately to capture new categories of protection. In practice, filing without a prior audit of the existing portfolio leads to duplication, inconsistent priority dates, and unnecessarily high maintenance costs. A structured classification exercise – identifying what is adequate, what needs supplementation, and what should be retired – is the prerequisite for an efficient migration.
2. Map legislative timing to your product roadmap. The two-phase structure of the EU design reform means that the optimal filing format for animated and GUI designs changes between Phase I and Phase II. Businesses that filed early under Phase I in static-image format may find that their representations do not fully exploit the electronic and 3D options available from 1 July 2026. Where possible, timing new filings for product lines in active development to coincide with Phase II avoids a second round of supplementary applications.
3. Corporate housekeeping is part of IP strategy. Assignment records, Handelsregister entries, and entity-level consistency are frequently treated as administrative background work. In a portfolio migration context, they are on the critical path: a design registered in the name of a dissolved or restructured entity cannot be straightforwardly enforced or transferred. Verifying and, where necessary, correcting the ownership record before new filings are made avoids complications in any subsequent Bundesgerichtshof-level enforcement or licensing transaction.
Phase II of the reform and the ongoing national transposition process mean that design portfolio management in Germany will remain an active discipline through at least the end of 2027. We will continue to publish analysis as DPMA guidance develops; our current monitoring note on Phase II implementation is available at EU Design Reform Phase 2 alert.
If your business is working through a comparable portfolio migration – whether centred on GUIs, animated marks, multi-class filings or the interaction between design rights and trade mark protection – our team can discuss the specific considerations that apply to your situation. Please reach out at info@ferrazwhitmore.com or visit our contacts page to arrange a conversation.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.