Normal Use or Intended Use – does it matter?
Summary
This article follows on from our article, which was posted just after C-472/21[1] was referred to the CJEU.
In the English version of Directive 98/71[2] (the ‘Directive’) according to Article 3.3(a), a product that which is ‘a component part of a complex product shall only be considered to be new and to have individual character’ if it ‘remains visible during normal use’. Article 3(4) further states ‘Normal use’ within the meaning of paragraph (3)(a) shall mean use by the end user, excluding maintenance, servicing or repair work.’
The key words here are ‘normal use.’ The German version of the Direction uses the words ‘bestimmungsgemäße Verwendung,’ which more literally translates as ‘intended use.’
The Advocate General in this case, Maciej Szpunar, has just published his Opinion in C-572/21,[3] which states that the term ‘normal use’ should be construed widely to harmonise EU law on this topic. Assuming the Court follows the Advocate General’s opinion, this case will be good news for those trying to protect design rights in components of complex products.
Background
The request for a preliminary ruling comes from a case in front of the German Patent and Trade Mark Office (‘DPMA’). The case involved a registered design for the underside of ‘saddles for bicycles or motorbikes’ (the ‘Design’) owned by Monz Handelsgesellschaft International (‘Monz’). The design was registered in 2011. In 2016, Büchel GmbH & Co. (‘Büchel’) filed an application for invalidity with the DPMA, claiming that the Design was invalid due to the German legislation implementing Article 3.3(a) and 3.4 of the Directive.
DPMA Decision
As mentioned above, according to the English version of the Directive, a design that is part of a complex product must remain visible during ‘normal use’ of the complex product. If the design is not visible, it cannot be protected as it is deemed to lack individual character. Article 3.4 specifically excludes maintenance, servicing or repair work. Articles 3.3 and 3.4 are designed to protect the spare-part industry by preventing design protection for internal elements of motor vehicles, such engines and radiators.
The DPMA rejected Büchel’s application. It found that ‘normal use’ of a bicycle includes getting off the bicycle, parking it, and taking the saddle away from the frame of the bike to stop it being stolen. During this use (especially the removal of the saddle), the Design would be visible, and so the design right is valid.
Appeal to the Federal Patent Court
The Federal Patent Court overruled the DPMA and found the Design to be invalid. The Court said that the ‘normal use’ (as the Court understood it) of a bicycle is as a means of transportation. It found that parking the bike or removing the saddle were ancillary to normal use, rather than themselves normal use. It also relied on the fact that the visibility had to continue when the Design was incorporated into the complex product (i.e. the bicycle): this would mean that visibility when the saddle was removed to prevent theft was irrelevant. As the underside of the saddle is not visible when the bicycle is being ridden, the Design is invalid.
Questions to the CJEU
The question that the Federal Patent Court had to answer was what was meant by ‘normal use.’ As mentioned above, the German words ‘bestimmungsgemäße Verwendung’ translate more precisely to ‘intended use.’ The Court found that the English and French words (the French is ‘utilization normale’) connotes a broader scope than the German, and would take into account how a complex product is used in practice as opposed to just how the manufacturer intended for it to be used. The Court suggested that parking and storing the bicycle would be part of the English/French ‘normal use’, they would not be part of the German ‘intended use.’
Monz appealed to the Federal Court of Justice. The Court stayed the proceedings and put the questions of interpretation to the CJEU,[4] i.e. whether: The component product needs be visible only during normal use or whether it can be seen from any user perspective; and whether ‘normal use’ only includes use as ‘intended by the manufacturer’, (i.e. the German version of the Directive), or whether it also refers to other circumstances that may arise in the customary course of use of the product by the end user.
While the Court has not yet given its answer to the preliminary questions, Advocate General Szpunar has published his Opinion. He gave a simple answer to the first question – the component in question must be ‘visible in the situation of normal use of that complex product.’[5] In terms of visibility, he stated that:
‘provision cannot be understood as requiring that component part to be visible to the end user. Account must also be taken of visibility to other observers.’[6]
He mentioned that if the perspective of the end user was definitive, defining such would be difficult. He gave the example of a bus – for which the end user could be the driver, the passengers, the staff of the transport company operating the bus, each of which would have a different perspective.[7] Therefore, it is better to consider visibility from both any user and also other observers.
The question then became defining ‘normal use.’[8] The Advocate General did not delve into the linguistic variance between the German and English versions of the Directive. Rather he considered the basis of protection that should be equal across the European Union. He opined that using the narrow approach of only granting design protection to bicycle parts that were visible when the bike was being ridden would lead to:
‘[T]he undesirable result that no design applied to a saddle could enjoy protection, since during the principal use of a bicycle, when it is being ridden, the saddle is fully covered by the part of the user’s body that is used for sitting.’[9]
And further:
‘[T]his approach produces too narrow a definition of ‘normal use’ within the meaning of Article 3(4) of [the Directive], unjustifiably limiting the protection of designs applied to component parts of complex products.’
The Advocate General went on to compare the underside of the bicycle saddle with the lining of a jacket or the sole of a shoe[10] – both of which, as non-complex products, can be afforded design protection even though they are not visible during the use of the product in its principal function.
He disagreed with the Federal Patents Court and opined that it was wrong to ‘assimilate normal use of a product with the principal function for which the product is intended.’[11] Despite Article 3.4 excluding maintenance, servicing or repair work, the Advocate General stated that this should not be given a broad interpretation.[12] He said:
‘[I]t would go against all logic to exclude washing and cleaning from the concept of ‘normal use’, especially because regular cleaning is essential for the use of some products … there are acts of routine maintenance normally carried out by the end user of a product, which are often also essential for use, such as replacing consumables and operating fluids, inflating vehicle tyres or filling the fuel supply of products with a combustion engine.’[13]
Even elimination of minor faults, such as fixing a paper jam in a printer, would not be considered maintenance, servicing or repair work.[14]
In summary, the Advocate General’s simple answer to the second question is:
‘[T]he words ‘normal use’ refer to all situations which may reasonably arise during use of a complex product by the end user.’[15]
Commentary
On the assumption that the CJEU follows the opinion of the Advocate General, this is good news for the designers of component parts for complex products. ‘Normal use’ will be construed widely, and therefore design rights will not be withheld from components of complex products unless they are not visible during any reasonable use of the complex product by the end user. This would include the inside of a printer, as long as the design was visible when the printer was opened up to fix a jammed piece of paper.
Under Article 26.2 of the TRIPS Agreement,[16] Members (including the EU) are supposed to have only limited exceptions to design protection. By defining ‘normal use’ in its broader sense, the CJEU will minimise the exception that states that design rights cannot be granted to component parts of complex products where the component is not visible in the normal use of the product.
There is a separate question as to whether the Advocate General’s opinion aligns with the intention of the Directive. For example, if a car-owner lifts the bonnet of their car to top-up the screen wash it would appear that the Advocate General would consider this ‘normal use’ of the car. Whether it was really the intention when drafting the Directive that all of the components that are visible when you lift the bonnet are capable of attracting design protection, is another question. We will have to see if the CJEU follows the Advocate General’s Opinion on this point, but it seems likely that there will be further case law in this area, particularly as the spare parts provisions were enacted specifically with the automotive industry in mind.
If you have any questions on the scope of design protection please contact:
Benedict Sharrock-Harris & George Hudson
[1] https://curia.europa.eu/juris/documents.jsf?num=C-472/21
[2] https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A31998L0071
[3] https://eur-lex.europa.eu/legal-content/EN/TXT/HTML/?uri=CELEX:62021CC0472
[4] https://curia.europa.eu/juris/showPdf.jsf;jsessionid=F0E23D0CEDDD1B6A9610850D52785BC0?text=&docid=2 46881&pageIndex=0&doclang=en&mode=req&dir=&occ=first&part=1&cid=322278
[5] Above n.3 at 21.
[6] Ibid at 34.
[7] Ibid at 35.
[8] Ibid at 22.
[9] Ibid at 26.
[10] Ibid at 30.
[11] Ibid at 38.
[12] Ibid at 41.
[13] Ibid.
[14] Ibid.
[15] Ibid at 46.
[16] https://www.wto.org/english/docs_e/legal_e/trips_e.htm#art26
