Schrödinger’s saddle – visible and invisible at the same time?

Applications for registered designs require the indication of a product to which the design is applied or in which it is incorporated (Art. 25(1)(d) of the EU Design Directive (“EUDD”) and Art. 42(2) EU Design Regulation). Recital 17 EUDD explains the rationale and effect of the product indication:

“While an indication of the products should be part of an application for registration of a design, it should not affect the scope of protection of the design as such. Together with the representation of the design, indications of the products can nevertheless serve to determine the nature of the product in which the design is incorporated or to which it is intended to be applied. Furthermore, indications of the products improve the searchability of designs in the register of designs kept by an industrial property office and increase the transparency and accessibility of a register. Therefore, prior to registration, indications of the products need to be accurate, without creating an undue burden on applicants for a registered design.”

What happens when a registered design covers several product indications, but is not protectable for one of them? This is explored by the German Patent Court (“GPC”) in a familiar case (30 W (pat) 802/23, Sattelunterseite II).

Background

The German company Monz is the holder of the German design No. 40 2011 004 383-0001, registered at the German Patent and Trade Mark Office (“GPTO”) for “saddles for bicycles or motorbikes”. The design consists of a single representation showing the underside of a saddle:

The German company Büchel filed an application for a declaration of invalidity with the GPTO. It claimed that the underside of the saddle is not visible during normal use, which would mean that it cannot be protected by design law (now Art. 3(3)(a) EUDD).

While the GPTO considered the design valid, the German Patent Court (“GPC”) declared it invalid. Monz appealed to the German Supreme Court (“GSC”), which referred several questions to the Court of Justice of the EU (“CJEU”) regarding the interpretation of visibility and normal use in Art. 3(3)(a) EUDD. The CJEU responded in Monz Handelsgesellschaft International (C-472/21) that visibility is to be assessed during normal use from the point of view of the user as well as an external observer. Normal use also covers acts which are connected therewith, including storing and transporting the complex product after use but excluding maintenance, servicing and repair work (IPKat here). The GSC lifted the GPC’s first decision and remitted the case for a new decision.

The German Patent Court's decision

This time, the GPC considered the contested design valid.

1. Visibility on a bicycle

The GPC held that the design, in its appearance as the underside of a bicycle saddle fitted to a bicycle, remains visible during normal use.

Beyond riding, mounting and dismounting, normal use includes customary connected acts such as the following, during which the underside of the saddle is visible:

• carrying the bike on the shoulder over uneven terrain (e.g. during mountain biking) or carrying a folding bike;
• laying the bike on the ground during a break;
• storing the bike in a higher position (e.g. on a wall);
• transporting the bike on a car roof or in a car trunk.

The applicant's argument that mounting hardware (rails, clamps, brackets) obscured the design was rejected. The underside remained clearly visible even in the mounted state, because the brackets sit at a distance from the saddle surface and do not block the view from the angles that arise during normal use.

Since the invalidity applicant bore the burden of proving the negative fact that the design was not visible during normal use – in light of the presumption of validity under Sec. 39 German Design Act – and failed to discharge that burden, the exclusion under Art. 3(3)(a) EUDD did not apply.

2. Visibility on a motorbike

The interesting part of the decision concerns the fact that the design was not only registered for saddles for bicycles but also for motorbikes.

The Court found that although the product indication does not affect the scope of protection of a design, it serves as a non-binding interpretative aid and may contribute to a more precise definition of the scope of protection. Even though the design appeared to show a bike saddle, motorbike saddles existed (in particular for Harley-Davidsons), which had similar shapes: 

Thus, it was conceivable that the contested design could be used on the underside of a motorbike saddle. In this situation, the underside of the saddle would not be visible during normal use. The storage and transport options for bikes do not apply to motorbikes which are considerably heavier and larger than bicycles.

However, the invisibility during normal use did not lead to the invalidity of the design. The judges found that the exclusion under Art. 3(3)(a) EUDD applies only if the design is invisible in all cases of normal use. Where a component part can be fitted to multiple complex products and remains visible during normal use of at least one of them, design protection must be upheld.

The GPC advanced the following arguments:

a. Art. 3(3)(a) EUDD must be interpreted narrowly because it is inconsistent with the system of design law since it focuses not on the appearance of the design but on the use made of the product.

b. The protectability of a design must be ascertainable at the time of registration. Where the possible uses are not clearly delimited, visibility at the time of registration is not yet ascertainable and depends on fortuitous circumstances and, in practice, on how the user handles the product.

c. Art. 26(2) TRIPS Agreement allows only limited exceptions to design protection.

d. The visibility criterion could give rise to legal uncertainty and arbitrary application of the law because its application depends on the circumstances, whether products are visible or not.

The judges granted leave to appeal to the German Supreme Court.

Comment

The finding that visibility in at least one normal-use scenario is sufficient to defeat the Art. 3(3)(a) EUDD exclusion is persuasive and well-reasoned.

However, the case raises the following questions:

1. Should the design be partially invalidated, namely to the extent it covers saddles for motorbikes for which it is not protectable?

2. What would have happened if the design was only registered for “saddles for motorbikes”? Would it be allowed to take use in connection with products into account, which are not mentioned in the product indication?

3. What impact does this decision have on infringement proceedings if the defendant only uses the design in connection with motorbike saddles?

If the decision is appealed and upheld by the GSC, design applicants should mention as many products as possible to which the design can be applied or in which it can be incorporated. Maybe one of them can save the design from being invalidated.