Protecting “hidden” consumables

On 22 March 2023, the EU General Court issued a decision in case T-617/21, confirming that registered design protection is allowed for an electrode, a consumable, even though the electrode is not externally visible when used within a plasma cutting torch. This case is of particular commercial interest since it is often desired to protect consumables.

EU law prevents registered design protection for component parts of a complex product which are not visible in normal use through Article 4(2) of Regulation No 6/2002.

However, in the present case, the electrode was found to be a separate product, and not to constitute a component part of a complex product (the plasma torch), even though the torch would not function without an electrode.

This article provides a summary of the case and its findings.

Background 

In 2011, the design owner, Hypertherm, Inc., filed an EU Community design to the electrode, including the following views:

In 2017, B&Bartoni spol. s.r.o. filed an application at the EUIPO to declare the design invalid based on, inter alia, that the design did not meet the requirements for protection due to it being a component part of a complex product that was not visible in normal use under Article 4(2).

At first instance, the EUIPO agreed with B&Bartoni and considered that the electrode was a component part of a complex product and was not visible in normal use.  However, the decision was overturned at the EUIPO on appeal.  B&Bartoni appealed to the EU General Court which has upheld the decision of the EUIPO Board of Appeal.

Reasons for the decision 

The General Court considered the following factors in reaching its decision:

• The consumable nature of the electrode was a relevant factor in assessing whether it constituted a component part of a complex product.  The absence of a firm and durable connection of the electrode with the complex product, and the regular purchase and replacement of the electrode on account of its short lifespan, are criteria which are standard characteristics of a consumable, and which may serve to identify what constitutes a component part of a complex product.
• The torch was not considered to be disassembled and re-assembled when an electrode is replaced, and this was relevant in concluding that the electrode could not be regarded as a component part of a complex product.  To replace the electrode, the user unscrews and puts back on a cap and a nozzle from the front of the torch but this operation was considered so simple for the end user to perform that it could not be regarded as “disassembly” and “re-assembly” within the meaning of Regulation 6/2002.
• The torch could be regarded as a complete product without the electrode.  When the electrode is not present in the torch, the end user will not perceive that the torch is broken or incomplete (as would be the case if a durable part of the torch, such as the trigger or handle, were to be missing).  Furthermore, the torch is offered on the market without the electrode, and the electrode is commonly advertised and sold separately from the torch.
• The interchangeability of the electrode supplemented the analysis that it was not a component part of the torch.  The electrode could be used with different torches, and different electrode styles could be used within the same torch.   A product which cannot be replaced by another non-identical product or be used in different complex products is, in principle, more likely to be linked in a durable and tailored manner to that complex product and thus to constitute a component part thereof.

Conclusion and comment 

This case is comparable to a separate decision of the EUIPO Board of Appeal in which a vacuum cleaner bag was found not to be a component part of a vacuum cleaner (Miele Computer Cie.KG v Green Label Manufacturing Europe Limited), and to a decision of the District Court of the Hague, sitting as a Community Design Court, in which a toner cartridge was not considered to be a component part of a complex product (Samsung Electronics Co Ltd v Maxperian NL BV and Samsung Electronics Co Ltd v Digital Revolution BV).

The question as to whether or not a product comes within the concept of a “component part of a complex product” must be assessed on a case-by-case basis, and the Hypertherm case provides guidance for making this assessment.

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 mail@vennershipley.co.uk.