Occasionally visible parts – and protecting them as designs
The Court of Justice of the European Union (CJEU) has issued a judgement on questions referred to it by the Bundesgerichtshof (Federal Court of Justice, Germany), in case C-472/21. The Bundesgerichtshof was considering whether or not a registered design to the underside of a bike saddle was valid, and sought guidance on how to assess the visibility of the design in normal use.
The CJEU declined to provide an objective test for this assessment and instead set out criteria to consider when assessing the visibility of a design. The CJEU’s criteria opens the door to arguing that some occasionally visible component parts should be protected as registered designs.
The complex product exclusion
Under EU registered design law, it is only possible to protect component parts of a complex product if the component part, once it has been incorporated into the complex product, remains visible during normal use of the complex product. “Normal use” means use by the end user, excluding maintenance, servicing or repair work.
A complex product is a product which is composed of multiple components which can be replaced, permitting disassembly and reassembly of the product.
The provision is intended to exclude component parts from protection, which are only visible during maintenance, servicing or repair work, such as a car spark plug.
A bike saddle is a component part of a complex product (a bike) but is the underside of the saddle visible in normal use of the bike?
Monz Handelsgesellschaft International mbH & Co. KG (Monz) is the holder of a German national design, registered since November 2011, at the German patent office. The design includes a single representation to the underside of a bike saddle, as shown below.
In 2016, Büchel GmbH & Co. Fahrzeugtechnik KG (Büchel) filed an application with the German patent office to declare the design invalid, on the basis that the design is a component part of a complex product (a bike), and was not visible during normal use of the bike.
The German patent office disagreed with Büchel and considered that the design was valid.
Büchel appealed to the Bundespatentgericht (Federal Patent Court, Germany) which declared the design to be invalid.
Monz then appealed to the Bundesgerichtshof, which referred the following questions to the CJEU:
- Is a component part incorporating a design a “visible” component within the meaning of Article 3(3) of Directive 98/71 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 user perspective?
- If the answer to question 1 is that visibility under certain conditions of use or from a certain user perspective is the decisive factor, when assessing the “normal use” of a complex product by the end user within the meaning of Article 3(3) and (4) of Directive 98/71, is it the use intended by the manufacturer of the component part of the complex product that is relevant, or the customary use of the complex product by the end user? What are the criteria for assessing whether the use of a complex product by the end user constitutes a “normal use” within the meaning of Article 3(3) and (4) of Directive 98/71?
To broadly summarise the questions: is it possible to objectively assess the visibility of the design? If not, how should visibility in normal use be assessed?
The CJEU’s answer to these questions is as follows:
The requirement of ‘visibility’, laid down in that provision, that is to be met in order for a design applied to or incorporated in a product which constitutes a component part of a complex product to be eligible to benefit from the legal protection of designs, must be assessed in the light of a situation of normal use of that complex product, so that the component part concerned, once it has been incorporated into that product, remains visible during such use. To that end, the visibility of a component part of a complex product during its ‘normal use’ by the end user must be assessed from the perspective of that user as well as from the perspective of an external observer, and that normal use must cover acts performed during the principal use of a complex product as well as acts which must customarily be carried out by the end user in connection with such use, with the exception of maintenance, servicing and repair work.
The CJEU therefore did not set an objective test for assessing the visibility of a component part and instead provided criteria which must be applied to the facts of the case.
It is now up to the Bundesgerichtshof to decide whether or not the bike saddle is visible during normal use of the bike.
The CJEU’s criteria open the door to arguing that some occasionally visible component parts should be protected as registered designs.
Instead of an objective assessment, such as if the design forms part of an external surface of a product, a subjective assessment must be made as to whether or not the component part (in this case the underside of the bike saddle) is visible during normal use.
Firstly, the component part must be incorporated into the complex product, then an assessment must be made as to whether the component part is visible during the principal use of the complex product as well as acts which must customarily be carried out in connection with such use (with the exception of maintenance servicing or repair work). The visibility assessment must be made from the point of view of the end user and an external observer.
The principal use of the bike presumably includes riding the bike but do customary acts include locating the bike on an upper bike rack, removing the bike saddle to prevent theft, or doing stunts (all situations in which the underneath of the bike saddle could be visible)?
The underneath of the bike saddle forms part of the external surface of the bike. However, what about component parts which are internal to a complex product? Could they be protected if they are visible in situations other than maintenance, servicing or repair work?
Those interested in registered design protection would do well to consider this judgment and see how the CJEU’s criteria could be applied to obtain protection for occasionally visible component parts.
For more information on this or any other design matter, please contact your usual Venner Shipley attorney who will be pleased to assist or e-mail us at email@example.com.