Are “intended use” and “normal use” the same in EU design law? Court of Justice to interpret in case C-472/21

The Court of Justice of the European Union (CJEU) will soon issue its first ruling concerning the concept of “normal use” in EU design law (case C-472/21). While the notion is itself tricky, the case also has a linguistic twist – the term has different translations in different versions of Directive 98/71.

Request for a preliminary ruling in C-472/21 originates from a German invalidity case. In 2011, Monz Handelsgesellschaft International (design owner) registered a national design for “saddles for bicycles or motorbikes” at the German Patent and Trademark Office (DPMA). The design, to the right, is applied to the underside of a saddle. In 2016, Büchel GmbH & Co. (invalidity applicant), filed an application for invalidity at the DPMA. It claimed that the design was invalid under the provisions of German Design law that implement Art. 3(3) and (4) of Directive 98/71.

According to Art. 3(3) and (4) of Directive 98/71, a design, which constitutes a component part (e.g., a saddle of a bicycle) of a complex product (e.g., a bicycle), must remain visible during the normal use of the complex product once the component part has been incorporated into it. If not visible during normal use, such component part is not eligible for design protection, as it is deemed neither new nor having individual character. The assessment is done from the perspective of the end user, and excludes maintenance, servicing or repair work.

Though Art. 3(3) and (4) of Directive 98/71 do not expressly refer to motor vehicles, their drafting history shows how these requirements were introduced to regulate the aftermarket for spare parts. Fearing that design protection for engines or radiators (usually located within a car) would create monopolies in the market for spare parts, the lawmakers drafted this provision, which was criticised by scholars for its overbroad scope.

The DPMA rejected the application for invalidity. It opined that “normal use” of a bicycle includes not only riding it, but also getting on and off, parking the bicycle, as well as dismantling the saddle and taking it with the rider when parked outside, so it will not be stolen. In the opinion of the DPMA, the underside of the saddle would be visible to the end user during normal use, and thus the design is valid.

The invalidity applicant appealed to the Federal Patent Court, which found that the design is invalid (30 W (pat) 809/18). According to the court, the “normal use” of the bicycle is using it as a means of transportation. As such, “normal use” only includes riding the bicycle as well as getting on and off it. Parking a bicycle or storing the saddle at home are actions that precede normal use, but they are not in themselves normal use.

Moreover, Directive 98/71 requires visibility once the component part has been incorporated into the complex product: this would exclude removing the saddle to prevent robbery. The underside of the saddle is not directly visible, thus the design is invalid.

Still, the Federal Patent Court recognized that the concept of “normal use” poses a question of law. The main issue with understanding “normal use”, explained the court, is that the German version of Directive 98/71 refers to it as “bestimmungsgemäße Verwendung”, which stands for “intended” rather than “normal use”. According to the court, the term used in English (“normal use”) or French (“utilization normale”) versions connotes a broader scope, meaning that the normal use would be construed more expansively. It would also take into consideration how the complex product is used in practice.

In German, however, the meaning connotes “intended use”, which is more limited. The crucial factor is the purpose for which the product is intended rather than how it is actually used. Thus, while parking or storing are part of the meaning of the term “normal use” in English, they are not covered by the German “intended use”.

The design owner appealed to the Federal Court of Justice. Aware of the issues with interpretation, the court decided to stay the proceedings and ask the CJEU, whether: 1) the component product shall be visible only during normal use or it can be visible in abstracto; and 2) whether “normal use” only includes using the product with respect to its principal function (i.e., as “intended by the manufacturer”, which hints at the German version of the Directive), or it also refers to other circumstances that may arise in the course of use of the product by the end user.

Advocate General (AG) Szpunar recently delivered his Opinion on the matter. Answering the first question, AG confirmed that the component product must be visible during normal use, rather than also being visible in the abstract.

However, the crucial element is interpreting what “normal use” is, which is the focus of the second question. Here, AG skirted the issue of linguistic differences between different versions of the Directive. Harmonization is to be achieved through a uniform interpretation of the term. A too narrow interpretation of “normal use”, reasoned AG, would unduly limit the protection of designs for component products. Moreover, the requirement of visibility during normal use does not exist for “non-complex” products, such as shoes or clothing. Thus, lining of a jacket may be protected without additional requirements, unlike the underside of a saddle.

AG further opined that “normal use” should not be assimilated into the principal function of the product for which it is intended (as was done by the German court). “Normal use” may well include washing the product or eliminating minor issues, such as paper stuck in the printer. Thus, answers AG to the second question, “normal use refers to all situations, which may reasonably arise during use of a complex product by the end user”.

If CJEU now follows the reasoning of AG, the “normal use” will cover a wide variety of situations. This means that the exception under Art. 3(3) and (4) of Directive 98/71 will likely be applied only in a limited number of circumstances. This result would be in conformance with both the rationale of EU design law, as well as Art. 26(2) of the TRIPS Agreement, which allow only limited exceptions in design protection.