December 20, 2022
Monz Handelsgesellschaft International mbH & Co KG owns a German registered design dated 3 November 2011 for “saddles for bicycles or motorbikes”. The registration consists of a single representation showing the underside of a saddle:
In July 2016, Büchel GmbH & Co Fahrzeugtechnik KG applied to the German IP Office for a declaration of invalidity of Monz’s design, claiming that it lacked novelty and individual character. It said that, as a component part of a complex product, i.e. a bicycle or motorcycle, the design was not visible during normal use.
The application was rejected on the grounds that the design, as a component part, was visible during normal use as “normal use” covered “the disassembly and reassembly of the saddle for purposes other than maintenance, servicing or repair work”.
Büchel appealed to the German Federal Patent Court, which declared Monz’s design invalid, finding that only components that are “visible, as component parts of the complex product, after they have been mounted/incorporated in it” are automatically eligible for design protection. If the design can only be seen when the component part of a complex product is detached, there is no visibility such as to satisfy the requirements necessary for protection, it said. The court concluded that only riding a bicycle and getting on and off a bicycle was “normal use” and the underside of a saddle is not visible either to the user or to anyone else in those situations.
Monz appealed to the German Federal Court of Justice which has asked the CJEU whether Article 3(3) of the Design Directive (98/71/EC) must be interpreted as meaning that, for a design that constitutes a component part of a complex product, when it is applied to or incorporated in such product it is sufficient that the component part is visible in the abstract or whether the component part must be visible in the situation of normal use of that complex product.
Secondly, it asked whether Article 3(4) must be interpreted as meaning that the words “normal use” refer only to the use of the complex product in its principal function or whether they refer to all situations which may reasonably arise during use of such a product by the end user.
Advocate General Szpunar (the AG) said that the objective of the Directive is to provide protection to the appearance of the whole or a part of a product. If parts intended to be incorporated into a complex product themselves constitute products in accordance with Article 1(b) of the Directive, they can only enjoy protection if they are visible after such incorporation. It is therefore the appearance of the component part in the complex product that is the object of protection. However, the AG said, it is difficult to refer to the appearance of a product if, once it has been incorporated into a complex product, even if it is not completely covered and hidden from view, it is only visible in rare and unusual situations vis-à-vis “normal use”.
Therefore, the AG said, Article 3(3) of the Directive must be interpreted as meaning that, for a design that constitutes a component part of a complex product to be incorporated into a product, the component part must be visible in the situation of “normal use” of that product if it is to enjoy protection. Consequently, the crucial element was to consider the meaning of “normal use” in Article 3(4).
The AG noted that the German Patent Court had found that only riding a bicycle and getting on and off amounted to “normal use” and that the underside of the saddle is not visible in those situations. He also noted that applying such a narrow view of “normal use” has been reinforced by the General Court (GC), which has found that only the perspective of the end user of a complex product during use in its principal function is relevant.
However, the AG said, if this approach is applied to saddles for bicycles, it produces the undesirable result that no design applied to a saddle could enjoy protection, since during the principal use of a bicycle, i.e. when it is being ridden, the saddle is fully covered by the user’s body, except for the underside of the saddle, which remains invisible in any case. That is why, the AG explained, the German Patent Court included getting on and off the bicycle in the concept of “normal use”. However, it had excluded storing and transporting the bicycle as acts that take place before and after use of the bicycle. The AG was not convinced by this reasoning because if only riding a bicycle is considered “normal use”, getting on and off it is also an act that takes place before or after “normal use”. In the AG’s view, the distinction between these acts was arbitrary.
Overall, the AG said, taking this approach produced too narrow a definition of “normal use” and unjustifiably limited the protection of designs applied to component parts of complex products. The AG noted that the aim of the relevant provisions in the Directive is to avoid monopolisation of the spare parts market. However, he said, it should also be interpreted so as not to limit unduly the protection of designs applied to spare parts.
The AG said that under Article 3(4), “normal use” refers to use by the end user, excluding maintenance, servicing or repair work. Evidently, this implies, first and foremost “use”. The unmounting or destruction of a product does not constitute use of it, he said.
Given that interpretation, in the AG’s view, the GC was wrong to say that the visibility of a component part of a complex product must be assessed only from the perspective of the end user of the product, as it excludes others who will also assess visibility, such as manufacturers, sellers and recyclers of the product.
Consequently, although the component part of a complex product must be visible during “use” of the product “by” its end user, that does not mean that the component part must be visible to the end user. Account must also be taken of visibility to others. If the design is intended to attract buyers of products, then it is also intended to impress others to encourage them also to buy the product.
In addition, in the AG’s view, it is wrong to assimilate normal use of a product with the principal function for which the product is intended. In practice, use of a product in its principal function often requires other acts carried out before or after the product has fulfilled its principal function, such as storage and transportation. Where the product is a means of transport, there are the additional acts of getting on/in and getting off/out, as well as loading and unloading baggage and goods. There is nothing in Article 3(4) to suggest that such acts should be excluded from the concept of “normal use”. Accordingly, the AG said, all acts likely to be performed by the end user of a product in the context of his/her use of the product must fall under the concept of “normal use”, except for those that are expressly excluded.
Lastly, the AG said, although Article 3(4) expressly excludes maintenance, servicing and repair work from the concept of “normal use”, those exclusions should not be given too broad an interpretation, as some maintenance-related acts are an intrinsic and essential part of the use of certain products, e.g. washing and cleaning, replacing consumables, inflating tyres, filling the fuel supply etc. The excluded acts, he said, are those that are supplementary to the use of the product, such as technical inspection, periodic maintenance or proper repair, which are carried out not by the end user, but by specialists and which may require disassembly of the product revealing component parts that are normally invisible during use of the product.
In the AG’s view, acknowledging the perspective of people other than the end user and including acts other than its principal function in the concept of “normal use” allows account to be taken of perspectives that are just as relevant in revealing the appearance of a product as that of the end user.
Accordingly, the AG said that Article 3(4) should be interpreted as meaning that “normal use” refers to all situations that may reasonably arise during use of a complex product by the end user. (Monz Handelsgesellschaft International mbH & Co KG v Büchel GmbH & Co Fahrzeugtechnik KG EU:C:2022:656 (Opinion of Advocate General) (8 September 2022) — to read the Opinion in full, click here).