When are “parts” actually “products”? Defining “component parts of complex products” under EU design law


The EU General Court has issued its decision in case T-617/21 (B&Bartoli spol. S.r.o v EUIPO), exploring the definition of a “component part of a complex product” in EU registered design law.

The case concerned the validity of a design registration for an electrode, a consumable component part of a welding torch, and the application of the requirements of ‘visibility in normal use’ for the purposes of obtaining Community design protection.

Key facts

Since 2011, Hypertherm Inc. has held a registered Community design for an electrode, depicted below:

B&Bartoni spol. s.r.o. filed a validity challenge against Hypertherm’s registered design in 2017, claiming  that the design did not meet the requirements for protection due to it being a component part of a complex product that was not “visible in normal use”, as required  under Article 4(2) of Council Regulation No. 6/2002 (the Community Design Regulation). (For further background on the “visibility” requirement, you can read our report on the recent Monz v Büchel case here.)

After proceeding through several stages of appeal, the invalidity application reached the General Court which confirmed that the electrode was not a “component part of a complex product”, but a separate product, which was not subject to the “visibility” requirement under Article 4(2) and therefore qualified for registered design protection in its own right.

Factors considered by the General Court

The General Court considered several factors in determining whether a component in the nature of Hypertherm’s electrode should be considered as a “component part of a complex product” that needed to be visible in the normal use of the complex product (i.e. the welding torch):

  • The “consumable” nature of the electrode

The electrode did not form a “firm and durable connection with the complex product” – in this case the welding torch. The nature of the electrode was such that it needed to be constantly replaced and, by extension, repurchased due to its short lifespan. These were regarded as  standard characteristics of “consumable” components.

  • The ease of replacing the electrode, without disassembly of the torch

The Court determined that, in order to change the electrode, the welding torch did not need to be disassembled and re-assembled. The Court drew a distinction between the replacement of parts through a ‘simple operation by the end user’  (e.g. the simple process of unscrewing the shield, the retaining cap and the nozzle of the torch and putting them back again after the electrode has been replaced) and more intricate replacements which would normally only be carried out by professionals with specialist skills and expertise. The ease and frequency at which the electrode was designed to be replaced  suggested that the electrode was not a “component part of a complex product” within the meaning of the Community Design Regulation.

  • The welding torch as a complete product

In conducting its analysis, the Court also considered  whether, in the absence of the component part in question (in this case the electrode), the complex product (the welding torch) would be considered incomplete or “broken” by the relevant public. The Court reasoned that, because welding torches are usually sold without electrodes, the relevant public would not perceive the welding torch without an electrode as incomplete or broken. By contrast, the Court considered that  a “complex product” (for the purposes of the Regulation) would usually be one which cannot be purchased without all its component parts.

  • Electrodes may be used interchangeably

The electrode could be used with different torches, and different electrodes could also be used in a singular welding torch. Although the Court accepted that “interchangeability” alone did not mean the component was regarded as a separate product, it was more likely to be seen as a “durable and tailored” part of that complex product if it was incapable of being replaced by another non-identical component or be used in different complex products.

Implications of the case for designers

The EU General Court has helpfully clarified the criteria for a product to be considered “a component part of a complex product” under the Community Design Regulation. This judgement suggests that consumables and other easily removable and replaceable internal parts are less likely to fall under this category, meaning they will not be subject to the “visibility in normal use” requirement under Article 4(2) to be validly registrable on their own.

The invalidity applicant in this case had argued that allowing registered design protection for non-visible components would give rise to unfair monopolies and harm competition. However, there was no proof of a “captive market” for spare parts arising from the registered design in this case. The interchangeable nature of the electrode meant that the welding torch could be used with other compatible electrodes, without infringing the registered design.

The case also has implications for the European Commission’s proposed Regulation and Directive reforming the system for design protection – specifically the introduction of a Community-wide “repair clause” for must-match spare parts (see our analysis here). To re-cap, the new provision would deny Community design protection for components which are used for the sole purpose of repairing a complex product so as to restore its original appearance. As the proposed repair clause uses the “component part of a complex product” wording, its meaning in that context may involve similar analysis. If so, there may be scope for designers to argue that interchangeable and easily removable external product accessories and attachments are not “linked in a durable and tailored manner to the complex product” and should therefore be regarded as separate products, which are not caught by the repair clause.

As things stand, and although the ruling in B&Bartoli provides some helpful guidance, the definition of “component parts of complex products” remains unsettled. As noted by the General Court, “whether a product comes within the concept of ‘component part of a complex product’ must be assessed on a case-by-case basis”. Pending further clarity, designers will welcome the Court’s confirmation that ‘consumable’ components and other interchangeable parts may, in some cases, be exempt from limitations to design protection.

Co-authored by Bernice Ewetade, Trainee Solicitor