Authors

Henry Richard Lauf

Salary Partner

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Louise Popple

Senior Counsel – Knowledge

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Callum Chamberlain

Trainee Solicitor

Authors

Henry Richard Lauf

Salary Partner

Read More

Louise Popple

Senior Counsel – Knowledge

Read More

Callum Chamberlain

Trainee Solicitor

31 May 2023

Brands Update - May 2023 – 6 of 9 Insights

First ECJ decision on visibility and intended use in relation to complex products

  • In-depth analysis

The Court of Justice (ECJ) has ruled for the first time on the notion of visibility and intended use in respect of component parts of complex products under the Designs Directive. The ECJ's broad interpretation of the term intended use expands the possibilities for protection of complex products under design law.

What has happened?

  • In Monz Handelsgesellschaft International, the ECJ has issued a first preliminary ruling on the interpretation of the requirements of visibility and intended use for component parts of complex products in Articles 3(3) and 3(4) of the Design Directive. 
  • Article 3(3) provides 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: (a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter, and (b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character." Article 3(4) provides that, "'Normal use` within the meaning of paragraph (3)(a) shall mean use by the end user, excluding maintenance, servicing or repair work."
  • In its judgement, the ECJ clarifies that a component part of a complex product enjoys protection under design law if it remains visible in the context of normal use and that the intended use by the manufacturer is not the only factor. 
  • According to the ECJ, whether the component part of a complex product remains visible during its intended use must be assessed from the perspective of the end user as well as an outside observer. In this context, use for its intended purpose is to be interpreted broadly and includes all actions undertaken in the course of the principal use of the product, as well as those actions which the end user is normally required to undertake in the course of such use (with the exception of maintenance, servicing and repair, which are specifically excluded in the Directive).
  • The ECJ's decision will be welcome by many design owners, especially from the industrial sector. Its broad interpretation of the term intended use expands the possibilities for protection of complex products under design law. This is illustrated by the example of the Advocate General in his Opinion with regard to a shoe sole. A shoe is not a complex product, therefore the sole of a shoe is not a component of a complex product, so the visibility during intended use of the shoe is not relevant for its protectability. For this reason, the sole can also be protected under design law without further argument. If, however, a shoe was a complex product and the intended use was interpreted narrowly, the sole of the shoe would fall outside the scope of protection of the design. This is because the intended use of a shoe is putting it on and taking it off, as well as wearing and walking on it, during which the sole would not be visible to the end user. 
  • Further examples of the Advocate General also illustrate how important the broad interpretation of the term intended use will be for complex products. This is particularly so as cleaning, usual maintenance and presumably also refilling can also fall under this term. Internal components (such as engines, or at least engine covers etc) for vehicles should presumably not be excluded from the outset. 
  • The ECJ's interpretation that normal use should be based not only on the manufacturer's intended use and not only on the end user's normal use, but also on the view of an outside observer, also strengthens the protection of complex products. This is illustrated by an example of buses. If the end user of buses was taken as the sole point of reference, this would primarily be (only) bus drivers. The intended use would be the transport of passengers and the exterior of the bus might be excluded. However, if the circle is expanded to include outside observers, passengers can also be included such that the exterior silhouette of the bus can also be made the subject of design protection.

Want to know more?

The case in question concerned invalidity proceedings before the German Patent and Trade Mark Office (DPMA) against a German design consisting of the underside of a bicycle saddle. The design is registered with a single representation for saddles for bicycles and motorbikes. 

underside of a bicycle saddle

The DPMA rejected the application for invalidity because there was no ground for exclusion of protection under the German Design Act for the design in question. Although a bicycle saddle was a component of a complex product (namely a bicycle or motorbike), the underside of the saddle also remained visible during the intended use of the bicycle. The term intended use was not to be interpreted narrowly and also included, for example, transport. 

On appeal by the invalidity applicant, Bundespatentgericht, the Federal Patent Court (BPatG) subsequently declared the contested design invalid. The BPatG interpreted the term intended use more narrowly stating that the underside of the bicycle was not visible in the context of normal use (ie riding the bicycle and getting on and off the bicycle) and design protection was therefore ruled out.

The design owner appealed against this decision to Der Bundesgerichtshof, the Federal Court of Justice (BGH), which in turn had doubts about the interpretation of the terms visibility and intended use within the meaning of Articles 3(3) and (4) of the Designs Directive. The BGH therefore stayed the proceedings and referred the following questions to the ECJ for a preliminary ruling:

  • Does the assessment of the intended use of a complex product by the end user within the meaning of Article 3(3) and (4) of Directive 98/71 depend on the intended use by the manufacturer of the component part or of the complex product or on the customary use of the complex product by the end user?
  • What criteria are to be used to assess whether the use of a complex product by the end user is intended within the meaning of Articles 3(3) and (4) of Directive 98/71?

The ECJ answered the questions as follows:

  • "The requirement of visibility which, according to the Directive, must be satisfied in order for a design used or incorporated into a product (which is a component part of a complex product) to enjoy legal protection as a design must be assessed in relation to a situation of normal use of that complex product." 
  • "It is essential that the component part in question, once incorporated into that product, remains visible during such use. For this purpose, the visibility of a component part of a complex product during its intended use by the end user must be assessed from the point of view of that user as well as from the point of view of an outside observer. That intended use comprises the operations involved in the main use of a complex product as well as the operations normally carried out by the end-user in the course of such use, with the exception of maintenance, servicing and repair".
  • The ECJ explained that design protection only applies to visible features that characterise the appearance of a product or a part thereof. However, a mere abstract assessment of the visibility of a component was not sufficient. However, it was also not necessary that in a complex product the component remained completely visible at all times of use. Nor was visibility to be assessed solely from the point of view of the end user, but outside observers were also to be considered.
  • With regard to intended use, the ECJ explained that it was not solely a matter of the intended use of the manufacturer. The fact that Article 3(4) of the Design Directive does not define intended use in more detail, but refers in general to the use of such a product by the end user, speaks in favour of a broad interpretation of the term. In this respect, the ECJ followed the opinion of the Advocate General, who in turn had argued that in practice various acts can constitute intended use, such as storage or transport of the products. All these acts (with the exception of the use of the product by the end user) were covered by the term intended use and with the exception of those expressly excluded in Article 3(4) of the Design Directive (maintenance, servicing or repair), fell under the concept of intended use.

This is an important ruling that will impact on the protection of numerous designs.

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