The Court of Justice of the European Union (CJEU) last week clarified the important concept of “normal use” in European design law. The CJEU took a broad interpretation of this term, which could now be a boon for right holders, particularly in the spare parts industry. The case is also notable since the Court, the highest in the EU, hears very few cases relating to designs – typically only about once per year.
Case C-472/21, Monz Handelsgesellschaft International mbH & Co. KG v Büchel GmbH & Co. Fahrzeugtechnik KG, originates from an application for invalidity at the German Patent and Trademark Office (DPMA) by Büchel of a German design right held by Monz. The design relates to the appearance of the underside of a ‘saddle for bicycles or motorcycles’. Büchel argued that the design applied to a saddle, which is a component part of a complex product (the bicycle), was not visible during normal use of that product and, therefore, was not eligible for protection.
Registered designs in the EU are harmonised by EU Directive 98/71. Article 1(c) of that Directive establishes that a “complex product” means a product which is composed of multiple components which can be replaced permitting disassembly and reassembly of the product. Article 3(3)(a) of the Directive requires that designs applied to component parts of a complex product can only be new and have individual character (legal requirements for protection as a design) “if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter”. Article 3(4) explains that ‘“normal use” within the meaning of paragraph 3(a) means use by the end user, excluding maintenance, servicing or repair work.’ These provisions of the Directive were hotly debated at the time of drafting and were intended to prevent monopolies in aftermarket sales of spare parts, especially in the automotive industry.
Given that the underside of the bicycle seat design is not typically visible to the end user when the bicycle is being ridden and is only visible when the user dismounts and removes the saddle –apparently some people remove their saddles to prevent them from being stolen – the question arises as to whether this amounts to normal use of a bicycle or not. The DPMA held that it did, having construed the list of activities excluded from normal use narrowly, such that normal use includes disassembly and reassembly of the saddle for purposes other than maintenance, servicing or repair and rejected the application for invalidity. The German Federal Patent Court then overturned this decision, invalidating the design, having held that component parts must be visible after they have been mounted/incorporated in the complex product.
A further appeal was brought by Monz before the German Federal Court of Justice. That court then requested the present preliminary ruling from the CJEU on the following two questions relating to “visibility” and “normal use” as used in Articles 3(3) and (4) of the 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 Directive that the component part must remain visible during normal use of the product in order to benefit from protection. Hence, the CJEU held that “it follows that an assessment in abstracto 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.” This effectively narrows the scope of the exclusion under Article 3(3) of the Directive since component parts that are only temporarily visible might now benefit from protection.
Moreover, 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”.
Turning 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 English translation “normal use” and the French translation “utilisation normale” connote “normal” or “customary” use as the requirement for visibility. On the other hand, the German translation “bestimmungsgemäße Verwendung’” suggests “use in accordance with the intended purpose of the product”. A manufacturer’s intended purpose for a product may be more restrictive than the way in which the product actually ends up being used. The CJEU noted that the translations connoting customary use were what the legislator intended and, therefore, normal use “cannot be based solely on the intention of the manufacturer of the component part or of the complex product”.
The CJEU has also confirmed that the list of excluded acts (maintenance, servicing, and repair) under Article 3(4) of the Directive should be interpreted narrowly. As a result, 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”, with the exception of the expressly excluded acts.
The CJEU has not ruled on whether or not the bicycle seat design is itself valid — that is a matter for the German courts.
Registered design holders will likely be pleased with the way that the CJEU has chosen to broaden the interpretation of “normal use”, thereby narrowing the exclusions under Articles 3(3) and (4) of the Directive. Since it now appears that component parts which are only temporarily visible might be protectable, we may start to see more speculative design right filings to such component parts.
Whilst the CJEU has not provided any guidance on how to apply the new requirement that the visibility of the component part to an external observer must be taken into consideration, it seems that this also benefits design right holders by increasing the pool of people whose view can be considered in the assessment. It also helps avoid the issue of having to determine exactly who the end user is, which may be difficult in situations where there are different types of user, for example, on a bus.
Conversely, entities that rely on the exclusion from design protection of “invisible” component parts as part of their business model, for example manufacturers of spare parts, e.g. in the automotive industry, may have a tougher time obtaining freedom to operate. If it had been previously considered that normal use was restricted to the principal function of the product as intended by the manufacturer, as for example here when riding a bicycle, it is now clear that “normal use” encompasses other, customary acts relating to the principal use.