With the publication last week of the new Design Directive and Regulation (see here), the question of whether the appearance of a component part of a complex product can be registered remains a live issue.  On 16 February 2023, the Court of Justice of the EU ruled that the underside of a bicycle saddle is registrable.  This being the case, what else may be registrable on account of being “visible in normal use”?

 

Background

 

On 3 November 2011 Monz Handelsgesellschaft International mbH & Co. KG (“Monz”) registered a design with the German Patent and Trade Mark Office, (DPMA) for an underside of a saddle for bicycles or motorbikes (Design No. 40 2011 004 383-0001)  with the following single representation:

 

 

On 27 July 2016, Büchel GmbH & Co. Fahrzeugtechnik KG (“Büchel”) filed for a declaration of invalidity of the design registration, claiming that the design lacked novelty and individual character under Articles 3(3) and (4) of EU Directive 98/71/EC, which specify the conditions that have to be met to obtain protection of a component part of a complex product.

 

EU Directive 98/71/EC

 

Article 1 of the EU Directive 98/71/EC, which was issued on 13 October 1998, defines a “complex product” as a product which is composed of multiple components which can be replaced permitting disassembly and reassembly of the product.

 

Article 3(3) of the Directive specifies that a component part of a “complex product” is only considered novel, and to have individual character:

 

• if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter, and
• to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.

 

Article 4 of the Directive defines “normal use” as meaning use by an end user, excluding maintenance, servicing or repair work.

 

Lost in translation

 

At the first instance, the DPMA rejected Büchel’s request for a declaration of invalidity, interpreting the term “normal use” broadly. In particular, they stated that “normal use” would include dismantling the saddle by the rider when parking the bicycle outside to prevent the saddle being stolen. Consequently, the underside of the saddle would be visible to the end user during “normal use”.

 

During an appeal by Büchel however, the German Federal Patent Court overturned the DPMA’s decisionhighlighting that the German version of Directive 98/71 uses the phrase “bestimmungsgemäße Verwendung”, which translates to “intended use” rather than “normal use”. The Court held that while the removal of the saddle to prevent it being stolen may comprise “normal use” of the bicycle, it does not form part of its "intended use”. When being used as intended, the saddle will be in place, attached to the bicycle so that an end user can ride the bike. In that scenario the underside is not visible, and thus it is not afforded design protection under the German version of Directive 98/71.

 

The German version of Directive 98/71 as it stands therefore appears to provide a somewhat narrower scope of protection than both the English and French versions of the Directive, which use the terms “normal use” and “utilization normale” respectively. The result - a lack of harmonisation of the Directive across EU states.

 

Monz has now appealed the decision with the Federal Court of Justice, who has in turn referred two questions to the CJEU. Firstly, does the component product have to be visible during normal use or can it be visible in abstracto? And secondly does “normal use” only include using the product with respect to its principal function?

 

Decision

 

In the decision of the Court of Justice of the EU dated 16 February 2023, the Court ruled that a component part of a complex product must be and remain visible when in “normal use”, and this is not to be assessed in the abstract, unconnected to any practical situation of use of the product.  “Normal use” of a complex product does not require that the component part remains fully visible the whole time the complex product is being used, but use of a product may require various acts which may be performed by an end user before or after the product has fulfilled its principal function, such as storage and transportation of the product.  So  “normal use“ covers all such acts except those expressly excluded by Art. 4 para. 4 of Directive 98/71, viz. acts relating to maintenance, servicing and repair.

 

Comment

 

The Decision that a component part of a complex product must be visible when in normal use by an end user, is unsurprising and in line with the purpose of Article 3(3), which was introduced by the EU to prevent monopolies in spare parts markets.

 

The Court’s ruling on what defines “normal use” is more interesting, and broadens the term “normal use” further than is even intended in the English and French versions of the Directive.

 

Consider, for example, components which are visible when an end user opens up a printer to remove a paper jam.  Will such components now receive protection?  What about components in a car engine visible to an end user when they open the bonnet to refill the oil?

 

In T-10/08, the underside of a combustion engine intended for use in a lawnmower was ignored when assessing its novelty and individual character, as it was not visible whilst mowing a lawn. However, in future perhaps the underside won’t be ignored if it can be argued that “normal use” includes an end user removing simple blockages in the underside of the lawnmower caused by a build-up of grass when mowing.

 

Although Articles 3(3) and 4 will apply to only a very limited range of scenarios, nevertheless an increase in design registrations for component parts of complex products can be expected.