Board of Appeal sweeps floor with Invalidity Division: vacuum cleaner bags do enjoy design right protection

With the holiday season behind us, the vacuum cleaner is a valuable ally to get rid of leftover pine needles or bits of broken baubles. For those Kats that have a vacuum cleaner operating with cleaner bags, a decision by the EUIPO (Third) Board of Appeal (‘BOA’) may be of particular interest. In the case of Miele v. Green Label (of 23 August 2021), the BOA ruled that vacuum cleaner bags enjoy design right protection, overturning a previous decision by the Invalidity Division.

Background of the case

In 2008, Miele successfully registered a Community Design (‘CD’), consisting of a depiction of a vacuum cleaner bag, one of which is shown below. The design was applied for in respect of the product ‘vacuum cleaner bags’ in Class 09-05 of the Locarno Classification.

Green Label, a company selling vacuum cleaner bags, initiated an invalidity action against the CD in 2019 before the Invalidity Division. The action focussed on the question whether vacuum cleaners are complex products within the meaning of article 3(c) of the Community Design Regulation (‘CDR’) and if vacuum bags are component parts that are eligible for protection under article 4(2) CDR.

According to article 3(c) CDR, complex products are products composed of multiple components which can be replaced, permitting disassembly and re-assembly of the product. Article 4(2) CDR stipulates that component parts of a complex product can only be granted design right protection if, besides being new and having individual character, the component part (as incorporated into the product) remains visible during normal use. Normal use means regular use, and specifically excludes maintenance, servicing or repair work.

Considering the arguments of Green Label, the Invalidity Division found that vacuum cleaners are ‘undoubtedly’ complex products which consist of a large number of component parts that can be replaced, allowing them to be dismantled and assembled. Noting that a cleaner bag was designed in such way that it could fit into one or more vacuum cleaners, the Invalidity Division qualified the bag as a component part. The Invalidity Division concluded that the cleaner bags would not be visible during normal use, as both the opening of the vacuum (to reveal the bag) and replacement of the bag are part of regular maintenance of the vacuum cleaner. 

The decision by the BOA

On appeal, the BOA goes into a different direction. It firstly holds that ‘vacuum cleaner bags’ is a specific term within the class system of the Locarno Classification. Therefore, it would be ‘nonsensical’ if such a term would on the one hand be included in the class system, but on the other be excluded for design right protection.

On the substance, the BOA finds that although vacuum cleaners are complex products, the cleaner bags do not qualify as components within the meaning of article 4(2) CDR. In that respect, the BOA refers to an earlier decision by the CJEU (in the case Acacia v. Porsche) where it had held that the notion of ‘component parts of a complex products’: 

“covers multiple components, intended to be assembled into a complex industrial or handicraft item, which can be replaced permitting disassembly and re-assembly of such an item, without which the complex product could not be subject to normal use.” (point 65).

Applying the above to vacuum cleaner bags, the BOA states that contrary to another complex product of a vacuum cleaner, such as the ‘strip’ of the nozzle which gives more grip when cleaning a carpet, cleaner bags are consumables. Being consumables, the cleaner bags are promoted independently on the market and sold at various locations. This is different to non-consumable components, which are generally not advertised independently and only sold together with the vacuum cleaner.

What is this component?

Moreover, the cleaner bags do not have the nature of being re-used as normal components would, but are instead disposed of when they are full. When replacing the bags, the vacuum cleaner itself is not disassembled and reassembled again. Instead, the cleaner bags are removed and placed in the dust bag holder. Lastly, the BOA implies that without the cleaner bags, the vacuum cleaner would still be able to operate.

The BOA further considers that the qualification of cleaner bags as a component part of a complex product would create an unusually high barrier for design right protection. This in turn would be incompatible with ‘higher ranking law’ and pose adverse consequences for the design right protection of other consumables such as light bulbs, batteries or café capsules.

Concluding that the cleaner bags are not component of complex products, the BOA annuls the decision of the Invalidity Division and rejects the invalidity action. 

Comment

The decision by the BOA appears to be aimed at preventing an unwanted precedent, namely that consumable components of complex products would be barred for design right protection.
In doing so, the BOA relies on reasoning which may not be convincing to all. To this GuestKat, replacing a vacuum cleaner bag feels like essential (and unpleasant) maintenance. Moreover, as this GuestKast can confirm from first hand experience, operating a vacuum cleaner without a bag will inevitably result in its malfunction.. 

picture on the right is by painter Kobayashi Kiyochika and is in the public domain