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16 May 2022

Design protection of components

This is the first of two articles exploring some of the issues affecting the protection of components under the various UK and EU Community design regimes. Components can include “durable” spare parts that are only replaced after damage or wear (e.g. a car body panel) and also “consumable” components that are regularly replaced by the user following depletion (e.g. a coffee pod).

European lawmakers were wary of granting manufacturers a monopoly on the sale of spare parts incorporated into their products. For example, if vehicle manufacturers were able to protect all aspects of car components (e.g. bumpers and body panels) using design protection, then the manufacturers would effectively have a monopoly on the sale of replacement components, which could severely restrict competition in the spare parts aftersales market and thus the choice of the consumer. In view of this, European Designs Regulation no. 6/2002 (which gives rise to the Registered Community Design and Unregistered Community Design) and European Designs Directive 98/71/EC (which is implemented by EU Member States to give rise to national registered design law) were both drafted to include a number of limitations on the scope of protection that is available to spare parts.

We will look at some of these limitations in this article, namely the visibility requirement for component parts of complex products and also the exclusion of features that are dictated purely by technical function (which of course will also affect other categories of designs). A follow-up article will discuss the “must-match” exclusion, the related repair clause, and the “must-fit” exclusion.

Overview of different design regimes

Following Brexit, the UK and EU Community design regimes can broadly be put into three categories:

(1) Registered design rights, namely the UK Registered Design (‘UKRD’) and Registered Community Design (‘RCD’), which remain mostly harmonised although the UK now has the option to deviate from EU law (and aspects of both the UK and EU design systems are currently under separate review).

(2) Unregistered rights based on the Community system, namely the Unregistered Community Design (‘UCD’), the UK Continuing Unregistered Design (‘UKCUD’, which provides continuing protection in the UK for UCDs that came into force before the end of the Brexit transition period in January 2021), and the UK Supplementary Unregistered Design (‘UKSUD’, a new right that mirrors the provisions of the UCD to provide a corresponding scope of protection in the UK).

(3) The UK Unregistered Design Right (‘UKUDR’), which is quite different to the other designs systems discussed above and more closely resembles UK copyright law.

This article does not consider other forms of IP rights that may be relevant to the protection of components, including patents, copyright and trademarks. We will also not look at the various national design rights that are available in each Member State. However, most aspects of national registered design law are substantively harmonised by the Designs Directive and remain mostly aligned with the UK system, although there are some important exceptions such as the repair clause (which varies considerably between different Member States) and we will discuss this in our follow-up article.

The visibility requirement for component parts of complex products and the exclusion of features that are dictated purely by technical function discussed in this article apply to all of the UK and Community design regimes discussed above with the exception of the UKUDR.

Component parts of complex products

There is a requirement that “a design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new 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 complex product”, and then only “to the extent that those visible features of the component part are in themselves new and have individual character” (Art. 4(2) of the Regulation and Art. 3(3) of the Directive).”

A “complex product” is defined as “a product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product” (Art. 3(c) of the Regulation and Art. 1(c) of the Directive).

The exclusion will therefore prevent the protection of features of a component that are not visible during normal use of the product into which the component is incorporated.

Normal use is defined as “use by the end user; but does not include any maintenance, servicing or repair work in relation to the product” (Art. 4(3) of the Regulation and Art. 3(4) of the Directive). This would therefore clearly exclude protection of, say, internal components of a vehicle that are only visible during repair of the vehicle by a mechanic. However, the boundaries of what constitutes “normal use” is considered by many to be unclear, and is currently the subject of a referral to the CJEU (C472-21) from a dispute in the German courts between Monz Handelsgesellschaft International (Monz) and Büchel.

This CJEU referral concerns Monz’s German Registered Design No. 402011004383-0001 that was filed with a single view showing the underside of a bike saddle (shown below). Büchel filed an application for a declaration of invalidity of the design, on the basis that the underside of the saddle, which is a component part of a complex product, is not visible during normal use of the bicycle and therefore is ineligible for design protection.

Monz’s German design no. 402011004383-0001:

The validity of the registered design hinges on what is meant by “visible during normal use by the end user”. In one interpretation, protection is limited to only features that are visible from the perspective of the end user (i.e. the person riding the bicycle, which would exclude the underside of the saddle) or only under certain conditions of “use”, in which case the design would likely be found invalid. However, another interpretation of the exclusion would be that all features which are visible once the component has been mounted to the product and the product is in a condition for use are protectable, regardless of whether the features are visible from the perspective of the person using the product (for example, the underneath of the saddle is still visible by crouching down next to the bicycle). The case has been referred to the CJEU with the following questions:

(1) Is a component part incorporating a design a ‘visible’ component… if it is objectively possible to recognise the design when the component is mounted, or should visibility be assessed under certain conditions of use or from a certain observer perspective?

(2) If the answer to Q1 is that visibility under certain conditions of use or from a certain observer perspective is the decisive factor:

a. When assessing the ‘normal use’ of a complex product by the end user… is it the use intended by the manufacturer of the component part or complex product that is relevant, or the customary use of the complex product by the end user?

b. What are the criteria for assessing whether the use of a complex product by the end user constitutes a ‘normal use’?

It will be interesting to see the outcome of this CJEU referral, and also whether UK courts decide to adopt a similar position.

Another factor that needs to be taken into account is whether the component is actually a “component part of a complex product” within the meaning of the exclusion. The provision was drafted with the original intention of applying to the internal components of vehicles in order to prevent car manufacturers obtaining a monopoly on the spare parts aftersales market. However, the exclusion has since been applied to the components of all manner of complex products, the bike saddle discussed above being just one example. Nevertheless, in some decisions it has been held that “consumable” components are not caught within the exclusion and thus are eligible for design protection, even if not visible during use. For example, in the case of Samsung Electronics v Maxperian (ECLI:NL:RBDHA:2016:14383) the District Court of The Hague, in its capacity as a Community designs court, found that printer toner cartridges are not a component part of a complex product, reasoning that a printer sold without such cartridges would still be a complete product. Therefore, two of Samsung’s RCDs (no. 001200687-0001 and 000853551-0001) to toner cartridges were held to be valid despite the cartridges not being visible when housed in the printer.

Samsung’s RCD no. 001200687-0001:

More recently, in Miele v Green label (R 299/2021-3) the EUIPO Board of Appeal found that vacuum cleaner bags are not a “component part of a complex product” and, in view of this, held that Miele’s RCD (no. 000992078-0003) was valid despite the fact that the bags are not visible when mounted within the vacuum cleaner. This is in contrast to an earlier Board of Appeal decision (R 568/2019-3) in which it was found that Vorwerk Elektrowerke’s RCD (no. 000124912-0001) was invalid on the grounds that a vacuum cleaner bag is a component part of a complex product and therefore, since it is not visible during normal use, could not be afforded design protection.

In the later Miele decision, the Board came to a different conclusion on the grounds that the earlier decision had not taken into consideration that: (i) there is an independent market for vacuum cleaner bags; and (ii) there is a Locarno class, 09-05, dedicated to “vacuum cleaner bags” and thus it “would be nonsensical to include a term as a product indication, but subsequently to deny protection for an RCD relating thereto under all circumstances”.

The first point is an important one, and on the whole patent offices and courts have attempted to draw a distinction between non-visible features of parts that are only replaced through damage/wear, and thus do not attract design protection, and non-visible consumable components that are regularly replaced by the end user and for which there are independent distribution channels, and thus for which protection may be possible. In the Miele case, the Board gave light bulbs, batteries, film reels and café capsules as other examples of consumables that would likely not be considered component parts of complex products within the meaning of the exclusion. The second point regarding the Locarno classification system is more difficult to follow. Whether or not a design is valid should be determined based on the facts of the particular case and, in any event, the Locarno classification also includes, for example, product indications for “Engine pistons”, “Exhaust manifolds for combustion engines” and “Sparking plugs for motors” in class 15-01, and “Washer reservoirs for vehicles” in class 12-16”.

In many instances it is difficult to see how these components could attract design protection if not visible during normal use of the complex product within which the component is incorporated irrespective of whether a particular Locarno class exists.

Miele’s RCD no. 000992078-0003:

Vorwerk Elektrowerke’s RCD no. 000124912-0001:

There is clearly still some uncertainty as to the extent of the exclusion, and offices have at times shown slightly irregular reasoning to justify protecting consumables based on the wording of the current law. In view of this, as part of Venner Shipley’s response to the UKIPO’s recent design consultation, we proposed that the definition of component parts is clarified.

Technical function

Another provision that will often affect the protection of spare parts is the exclusion from protection of “features of appearance of a product which are solely dictated by its technical function” (Art. 8(1) of the Regulation and Art. 7(1) of the Directive). The idea behind this limitation is that technical function is protected under the patent system and thus should not be subject to design protection, which should be limited to covering appearance (and note that registered design applications are not substantively examined in the same way as patent applications and the 25-year term of registered design protection is longer than the 20-year term available for patents). Only features of the component part or article that are deemed to be dictated solely by technical function fall within the exclusion, whilst the remaining features of the design may still merit protection. Usually a component will inherently perform some technical function, and therefore careful consideration should be given to what is actually protected once purely functional features of the component are disregarded.

Over time, two different tests developed for determining whether a feature is dictated solely by its technical function. The first approach is known as the “multiplicity of forms” test, where if the feature may take more than one form and still achieve the same function then it is not excluded from protection. The second approach is the “no aesthetic consideration” test, wherein the intent of the designer when creating the design is the deciding factor; if the designer considered the visual aspects of the feature when conceiving the design and the feature was not selected by the designer only for its technical function then the feature is not excluded from protection.

The CJEU considered the merits of these two approaches in Doceram v CeramTec (C‑395/16), in which the validity of a number of Doceram’s RCDs (no. 000242730-0001 to 0017) to various configurations of centering pins for welding was contested on the grounds that the features of appearance of the products in question were dictated solely by their technical function. The CJEU held that the “no aesthetic consideration” test was the correct one.

Doceram’s RCD no. 000242730-0001, 0003 and 0005:

The court noted that adopting the “multiplicity of forms” test would be problematic because a single economic operator would be able to obtain several registrations as a Community design of different possible forms of a product incorporating features which are exclusively dictated by technical function, and thus gain a monopoly over the technical function (in the case at issue, Doceram held seventeen different Community Design registrations to different shapes of centering pin). However, the court did note that “all objective circumstances” should be taken into account when assessing whether aesthetic considerations were taken into account when incorporating a feature into a design, and that these included information on its use or the existence of alternative designs which fulfil the same technical function (i.e. the “multiplicity of forms” test could still be a factor, just not the only factor that is considered).

Stay tuned for our next article in which we will look at the “must-fit” and “must-match” exclusions and the related repair clause.

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