On 16 February 2023, the Court of Justice of the European Union (CJEU) handed down its Decision 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, or the customary use by the end user?
b. What are the criteria for assessing whether the use constitutes “normal use”?
What did the court decide?
The design holder, the manufacturer of the component part and the manufacturer of the complex product are not necessarily one and the same. Accordingly, it would be overly simplistic to assume that a manufacturer who sees no benefit in visibly presenting a design has no interest in invoking the protection of that design.
Following the Opinion of Advocate General Szpunar (reported by Law-Now here), the CJEU stated that the visibility of a component part should therefore be assessed from the perspective of the end user of that product, as well as from the perspective of an external observer. While the decision did not go so far as to state that the component part must remain constantly visible while the complex product is in use, it confirmed that visibility of the design during the normal use of a complex product is required to qualify for design protection.
On the meaning of ‘normal use’, the CJEU took a broad interpretation of Article 3(4) of the Directive 98/71/EC and held that the assessment should not be based on the intention of the manufacturer of the component part, nor the intention of the manufacturer of the complex product. Instead, 'normal use' of a complex product should correspond to the customary use of that product by the end user (and exclude the use of that product at any other stages of trade, preventing circumvention of the visibility requirement.) With the exception of maintenance, servicing and repair work, the CJEU stated that 'normal use' should cover acts relating to the customary use of a product and any other acts that might reasonably be carried out during such a use (including acts performed before or after the product has fulfilled its principal function, such as storage and/or transportation).
Implications of the case for designers
The CJEU has broadly interpreted the concepts of 'visibility' and 'normal use' within the meaning of Article 3(3)(a) and (4) of the Designs Directive (taking care to point out that 'normal use' should not be confused with the (narrower) concept of 'main/principal use'.)
While historically 'normal use' has been interpreted as the use of a complex product for its principal function (for example, the use of bicycle for the purposes of cycling), this decision broadens this interpretation to include any acts that are customary from the perspective of the end user. This includes acts performed alongside the product’s principal function (e.g. storage and/or transportation of a bicycle) - but expressly excludes maintenance, servicing and repair work.
This decision brings welcome legal certainty for design rights holders, and for traders whose business models depend on the exemption from design protection of non-visible components. It also widens the scope of protection for component parts of complex products under design law—even if they are not visible at first sight.
However, it remains unclear whether routine maintenance-related acts (such as washing and cleaning) would be considered to be 'normal uses'. Further clarification will be required on a case-by-case basis to determine whether an act is carried out 'customarily' by the end user in connection with the principal use of a complex product.