The Court of Justice of the European Union (CJEU) Advocate General Szpunar (AG) has delivered his Opinion in a request for a preliminary ruling by the Federal Patent Court of Germany (Bundespatentgericht) on the correct interpretation of the concepts of 'visibility' and 'normal use', which relate to the protection of component parts of complex products under the EU Designs Directive.
The case is Monz Handelsgesellschaft International mbH & Co. KG (‘Monz’) v Büchel GmbH & Co. Fahrzeugtechnik KG (‘Büchel’) (Case C-472/21) and involves a German design registration owned by Monz comprising a single image depicting the underside of a bicycle saddle (German Design No 402011004383-0001 registered on 3 November 2011 for ‘saddles for bicycles or motorbikes’).
Proceedings before the German national courts
On 27 July 2016, Büchel applied to the German Patent and Trade Mark Office (DPMA) for a declaration of invalidity of the contested design, claiming that it did not meet the necessary conditions for protection as to novelty and individual character. Büchel asserted that the design was excluded from protection under German design law on the grounds that, as a component part of a complex product such as a ‘bicycle’ or a ‘motorcycle’, it was not visible during normal use.
Monz argued that the design would be visible during cleaning and routine maintenance normally carried out by bike owners and that such use should fall within the concept of ‘normal use’.
On 10 August 2018, the DPMA upheld the design registration. In its view, although it was true that the design was a ‘component part of a complex product’, that component nevertheless remained visible during normal use of that complex product. The DPMA considered that normal use covered ‘the disassembly and reassembly of the saddle for purposes other than maintenance, servicing or repair work’, especially since Paragraph 1(4) of the German Law on the legal protection of designs (Gesetz über den rechtlichen Schutz von Designs) contains ‘an exhaustive list of non-normal uses designed as an exception and, as such, [should] be interpreted strictly’. Accordingly, the DPMA held that ‘any use by the end user which is not maintenance, servicing or repair work … therefore constitutes normal use’.
On appeal by Büchel, the Bundespatentgericht held that only components that remain ‘visible, as component parts of the complex product, after they have been mounted/incorporated in it’ are automatically eligible for design protection. The Bundespatentgericht considered only riding a bicycle and getting on and off a bicycle to constitute “normal” use. Since, during such uses, the underside of the saddle was not visible either to the end user or to another person, the Bundespatentgericht declared the contested design invalid by its decision of 27 February 2020.
Monz appealed this decision before the Bundespatentgericht, who considered that the corresponding wording of Articles 3(3) and (4) of Council Directive 98/71/EC (the “Designs Directive”) was open to interpretation. Those provisions provide that:
'3(3). 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.
3(4). “Normal use” within the meaning of paragraph (3)(a) shall mean use by the end user, excluding maintenance, servicing or repair work.'
Questions referred to the CJEU
The Bundespatentgericht referred the following questions to the CJEU for a preliminary ruling:
(i) Is a component part incorporating a design visible within the meaning of Article 3(3) 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 observer perspective?
(ii) If visibility under certain conditions of use or from a certain observer perspective is the decisive factor:
a. Is it the intended use by the manufacturer that is relevant of the customary use by the end user?
b. What are the criteria for assessing whether the use constitutes “normal use”?
The AG’s Opinion
In his Opinion, the AG examined the concepts of ‘visibility’ and ‘normal use’ as conditions for protection of a component part of a complex product. He ultimately reached the conclusion that
Article 3(4) of the Designs Directive should be interpreted broadly to encompass all situations that may reasonably arise during the use of a complex end product, with the sole exception of expressly excluded maintenance, servicing and repair work.
The Opinion therefore supports the following interpretation of the Designs Directive:
Article 3(3) must be interpreted as meaning that in order for a design applied to or incorporated in a product which constitutes a part of a complex product to enjoy protection under that directive, the component in question must be visible in the situation of normal use of that complex product.
Article 3(4) must be interpreted as meaning that the words ‘normal use’ refer to all situations which may reasonably arise during use of a complex product by the end user.
The AG’s Opinion potentially broadens the interpretation of ‘normal use’ as a condition of protection of a component part of a complex product under the Designs Directive.
‘Normal use’ may previously have been interpreted as referring only to the use of a complex product in its principal function (so in this case, riding, mounting and dismounting a bicycle). The Opinion extends ‘normal use by an end user’ to encompass additional acts that form an intrinsic part of the use of the complex product in question. This includes acts that can be performed before or after the product has fulfilled its principal function, which in the current case could include, for example, the cleaning, storage or transportation of a bicycle, as well as loading and unloading baggage and goods.
By including all acts that are essential to the use of a product by an end user, the broadened interpretation of normal use widens the concept of visibility in parallel. This is because, under Article 3(3) of the Designs Directive, for a component design to be eligible for protection under the Directive, the component in question must be visible in the situation of normal use of that product. The new interpretation of normal use indicates that the component is considered ‘visible’ if it is visible during any act likely to be performed by the end user of a product in the context of their use of the product, other than those which are expressly excluded (i.e. maintenance, servicing and repair work).
This Opinion, if followed and applied by the CJEU, will be of significance both to design rights holders, and also to those traders whose business models depend on the exemption from design protection of non-visible components (e.g. those involved in the production and marketing of spare parts for complex products, notably in the motor vehicle sector). Any expansion in the concepts of “visibility” and “normal use” will potentially make it more difficult lawfully to reproduce component parts of existing designs as spare parts, if those components are visible in what could reasonably be considered part of the “normal” use (in the sense of “any situation that may reasonably arise during the use”) of the overall product, not limited to its principal or primary intended use.