The Court of Justice of the European Union (CJEU) recently clarified the concept of “normal use” in EU design law in case C-472/21 (Monz Handelsgesellschaft International).
The CJEU took a broad interpretation of the term “normal use” ruling that “normal use” covers all acts before, during and after using the complex product for its principal function, including storage and transportation, except use in relation to maintenance, servicing and repair works. This may make more products eligible for design protection, in particular component parts of so called “complex products”.
Design protection in the EU is granted for the appearance of the whole or a part of a product (Art. 1(a) of Directive 98/71, ‘Design Directive). A product is defined under Art. 1(b) of the Design Directive as any industrial or handicraft item, including parts intended to be assembled into a complex product.
A design for a component part of a complex product can enjoy design protection only if the component part remains visible during normal use of the complex product (Art. 3(3)(a) of the Design Directive).
Art. 3(4) of the EU Design Directive 98/71/EC clarifies the phrase ‘normal use’ as use by the end user, excluding maintenance, servicing or repair work.
In the recent case, Monz Handelsgesellschaft International mbH & Co. KG owned a German registered design comprising the below image of the underside of a bicycle seat (Design No 40 2011 004 383-0001).
Image of the registered design in question
This registered design was challenged for invalidity by Büchel GmbH & Co. Fahrzeugtechnik KG at the German Patent and Trademark Office (DPMA). Büchel argued that the underside of a saddle (component part) was not visible during normal use of the complex product (bicycle) and, therefore, was not eligible for design protection.
Initially, the German Patent and Trademark Office considered the design valid, but upon appeal, the German Patent Court declared the design invalid. In this regard, the German Patent Court considered that the component parts must be visible after they have been mounted/incorporated in the complex product. Thus they considered that in this case, during such use, the underside of the saddle would not be visible to the end user or to a third party.
Monz then subsequently appealed the decision to the German Supreme Court, where the court referred the following questions to the CJEU regarding the term “visibility” and “normal use” used in Articles 3(3) and (4) of the Design Directive.
(1) 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 observer perspective?
(2) If the answer to Question 1 is that visibility under certain conditions of use or from a certain observer perspective is the decisive factor:
(a) 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 or complex product that is relevant, or the customary use of the complex product by the end user?
(b) 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]?
In relation to the first question, the CJEU noted that it is clear from the wording of Article 3(3)(a) of the Design Directive that the component part must remain visible during normal use of the product in order to benefit from protection.
For example, the CJEU stated that “it follows that an assessment in abstract of the visibility of the component part incorporated into a complex product, unconnected to any practical situation of use of the product, is not sufficient to allow a component part to benefit from protection as a design under Directive 98/71. In that regard, it is necessary to clarify that Article 3(3) of Directive 98/71 nevertheless does not require a component part that is incorporated into a complex product to remain fully visible the whole time that the complex product is being used.”
Moreover, the CJEU stated that visibility “cannot be assessed solely from the perspective of the end user of that product… the visibility of such a component part to an external observer must also be taken into consideration”.
In relation to the second question, the CJEU had to resolve an apparent difference in meaning of the term “normal use” in the different language versions of Articles 3(3) and (4) of the Directive. The CJEU came to the conclusion that the legislator intended to refer to the customary use of the complex product by the end user, and thus normal use “cannot be based solely on the intention of the manufacturer of the component part or of the complex product”.
In relation to sub-question (b) of the second question, the CJEU confirmed that the list of excluded acts (maintenance, servicing, and repair) under Article 3(4) of the Design Directive should be interpreted narrowly.
Consequently, the CJEU held that normal use covers “acts relating to the customary use of a product as well as other acts which may reasonably be carried out during such use and which are customary from the perspective of the end user, including those which may be performed before or after the product has fulfilled its principal function, such as the storage and transportation of that product”.
The CJEU does not rule on the validity of the design itself, this will be determined by the German Supreme Court. However, they have offered some clarity on what may be deemed “normal use” in the case of component parts of complex products.
Significantly, the Opinion appears to broaden the scope of “normal use” when it comes to determining what can be considered “visible” in a complex product in order to obtain design protection. This may mean that designs of component parts which were previously thought of as less visible during “normal use” may be protectable since they may be “visible” during other non-conventional “customary” uses of the product or during storage and transportation, such as storing the product upside down, as in the present case.
This ruling may be of particular significance for spare parts manufacturers, who now may have a greater opportunity to protect their products, which may have previously been thought of as less visible during “normal use”. Conversely, this ruling may make it more difficult for some businesses to determine their freedom to operate, particularly if they rely on the exclusion from design protection of less visible component parts.
If you would like to know more about design protection, or whether your product may qualify for registered or unregistered design protection, please do not hesitate to contact us.