We look at the new repair clause, how it has been narrowed, what it means for interested parties and how other IP rights impact the spare parts market.
What's the issue?
- Spare parts are an important part of the automotive, consumer goods and other industries. However, they are often protected by IP rights, most notably registered and unregistered designs. This can significantly limit the ability of third parties to make and deal in spare parts - a matter which has been of concern to the EU Commission over the years as it reduces competition in the spare parts market and potentially discourages repair works.
- To address this, the EU Designs Regulation has long included provisions to limit the protection available to spare parts. One such provision is the so-called repair clause. It provides that it is not an infringement of a registered or unregistered EU-wide design to make or deal in a spare part for the purpose of repairing a complex product if certain conditions are met. The repair clause is effectively a defence to infringement.
- The EU Designs Directive (which governs national member state law on designs) also contains provisions relating to spare parts. To reflect the different approaches of member states to spare parts, the Directive provides that member states must maintain any existing provisions in their national designs legislation relating to the use of spare parts for repair (and only amend such provisions so as to liberalise the market for spare parts). However, where a member state does not have any such existing provisions in its national designs legislation, the Directive does not require them to introduce any.
- This has meant that there has been a differential approach to spare parts across the EU: an EU-wide design would not be infringed by the making or dealing in a spare part in accordance with the Regulation, but a national member state design might be infringed (depending on the approach taken in that particular member state to spare parts).
What's the development?
A longer-term solution has now been agreed and the repair clause has - with effect from 1 May 2025 - been made a permanent provision of the revised Regulation, albeit with a narrower scope.
Likewise, the recast Directive now provides that EU member states must include a repair clause (identical to that in the Regulation) in their national design laws. However, they have until 9 December 2027 or (in some cases) 9 December 2032 to do so. It means that the differential approach across the EU continues, potentially until 9 December 2032.
What does the revised repair clause say?
The revised repair clause provides that (with additions in italics):
- Protection shall not be conferred on… [a] design which constitutes a component part of a complex product upon whose appearance the design of the component part is dependent, and which is used… for the sole purpose of the repair of that complex product so as to restore its original appearance.
- Paragraph 1 shall not be invoked by the manufacturer or the seller of a component part of a complex product who failed to duly inform consumers, through a clear and visible indication on the product or in another appropriate form, about the commercial origin, and the identity of the manufacturer, of the product to be used for the purpose of the repair of the complex product, so that they can make an informed choice between competing products that can be used for the repair.
What conditions must be met to rely on the revised repair clause?
Those making or dealing in spare parts would have to satisfy a number of conditions to benefit from the defence to infringement provided by the revised repair clause (with only conditions 3 and 6 being new compared to the old repair clause in the Regulation):
- The spare part must fall within the definition of a "component part" of a "complex product". The repair clause refers to "component parts" – not spare parts – and links component parts to "complex products". While the term "complex product" is defined in the Regulation and Directive, the term "component part" is not (although there is a reasonable body of case law interpreting it). Ensuring that these definitions are satisfied is key. While items such as bicycle seats have been held to satisfy them, items such as ink cartridges and vacuum cleaner bags have not.
- Importantly, a part can only be a "component part" of a complex product if it is visible during "normal use" of the latter ("normal use" also being defined in the legislation and extensively interpreted in the case law). However, this requirement is partly mitigated by the fact that spare parts which are not visible during normal use of the complex product are unlikely to be protected by designs anyway (although the position should be checked on a case by case basis).
- The appearance of the design of the component part must be dependent on the complex product. This is new wording introduced by the revised repair clause and narrows the scope of the clause compared to that previously included in the old version of the Regulation. It means that only component parts that 'must match' (or are 'form dependent' on) the complex product can benefit from the defence. Some commentators cite car wheel trims as examples of spare parts that are not 'form dependent' and would not therefore now benefit from the defence. The argument is that, although wheel trims must attach to the wheels of the car, their shape need not otherwise match anything. Conversely, car skins such as bonnets and doors are clearly 'form dependent' and could benefit from the defence. The addition of this 'form dependency' requirement reverses the position taken on this particular issue by the ECJ in the Acacia v Audi and Porsche case.
- Only acts done solely for the purposes of repair benefit from the defence. This was the position under the Regulation (as interpreted by case law) anyway but has been made express by the inclusion of the word "sole" in the revised repair clause. It means that making or dealing in spare parts for purposes such as customisation would not benefit from the defence.
- Only component parts which restore the "original appearance" of the product benefit from the defence. This means that the spare part must be an exact copy of the original component part (with no changes of colour or design etc).
What about other IP rights?
Importantly, spare parts are often protected by other IP rights including (increasingly) copyright and registered and unregistered trade marks. However, there is no equivalent to the repair clause in any other IP legislation.
Indeed, the ECJ recently held in Audi v GQ that the repair clause provided for in respect of designs is not applicable to trade marks. It also held that the "intended purpose" defence to trade mark infringement did not allow the sale of a spare part incorporating a registered trade mark in this particular case. It has meant that a spare parts provider is effectively prevented from selling an Audi radiator grille as a spare part because to do so would constitute trade mark infringement – the grille containing an indent consisting of Audi's four-ring logo (which is registered as a trade mark).
Those who make or deal in spare parts must therefore consider the wider IP position (on a country by country and case by case basis) before proceeding.
What about the Right to Repair Directive?
The Right to Repair Directive imposes various obligations on manufacturers and others around repairs and spare parts, designed to facilitate the repair of products and the circular economy. There is a derogation from some of the obligations for products protected by IP rights but its scope (and how it interacts with the repair clause) is somewhat unclear. Individual advice should be taken on a case by case basis. More in our article here.
What does this mean for you?
- For OEMs/designers. Protecting spare parts through other IP laws such as copyright and registered trade marks will be important. Registered trade marks could potentially be used to protect the shape of particular spare parts/products themselves or could be incorporated into spare parts in some way like the Audi logo. Carefully reviewing whether spare parts being made and dealt in by third parties satisfy all the criteria in the revised repair clause (including the new 'form dependency' and notification/due diligence requirements) will also be key.
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For those who make or deal in spare parts. Understanding what IP rights protect particular spare parts will be key. Some will continue to focus on lower risk spare parts such as those that are not visible during normal use or are purely functional, and steer away from higher risk items such as components that are not obviously spare parts (eg ink cartridges). Those who have being making or dealing in items such as car wheel trims which might not meet the new 'form dependency' requirement in the revised repair clause will need to reconsider the risks.
Both parties will also need to be aware of when the new repair clause in the Directive comes into effect in each member state (which might vary for different design).
