Do you look under the saddle of your bike?

The legal situation regarding design protection for parts of a complex product in the EU is just that-- complex.

Design protection in the EU is granted for the appearance of the whole or a part of a product (Art. 1(a) of Directive 98/71, ‘Design Directive’). A product can be any industrial or handicraft item, including parts intended to be assembled into a complex product (Art. 1(b) of the Design Directive).

A design for a component part of a complex product can enjoy design protection only if the component part remains visible during normal use of the complex product (Art. 3(3)(a) of the Design Directive). The phrase ‘normal use’ means use by the end user, excluding maintenance, servicing or repair work (Art. 3(4) of the Design Directive).

The interpretation of the requirements of ‘visibility’ and ‘normal use’ can be challenging, as the preliminary ruling of the CJEU in case C-472/21 (Monz Handelsgesellschaft International) shows.

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 (cf. Art. 3(3)(a) of the Design Directive).

While the German Patent and Trademark Office considered the design valid, the German Patent Court upon appeal declared it invalid. The Patent Court found that a bicycle is a complex product and the saddle is a component part of that product. It deemed it necessary that the component part remains visible after it has been incorporated into the complex product. The German Patent Court considered only riding a bike (including getting on and off) to be normal use. During such use, the underside of the saddle is not visible either to the end user or to a third party.

Monz appealed this decision and the German Supreme Court (case I ZB 31/20) referred the following questions to the Court of Justice of the EU (CJEU):

(1) Is a component part “visible” if it is objectively possible to recognise the design when the component is mounted, or should visibility be assessed under certain conditions of use or from a certain observer perspective?

(2) If the answer to Question 1 is that visibility under certain conditions of use or from a certain observer perspective is the decisive factor:

(a) When assessing the ‘normal use’ of a complex product by the end user, which is relevant: (i) the use intended by the manufacturer of the component part, (ii) the use intended by the manufacturer of the complex product, or (iii) the customary use of the complex product by the end user?

(b) What are the criteria for assessing whether the use of a complex product by the end user constitutes ‘normal use’?

The CJEU’s decision

Frequently, the CJEU does not answer each question individually but considers it appropriate to examine them together. This was the case here. The ‘short’ official response to all three questions is:--

Article 3(3) and (4) of [the Design Directive] must be interpreted as meaning that the requirement of ‘visibility’, laid down in that provision, that is to be met in order for a design applied to or incorporated in a product which constitutes a component part of a complex product to be eligible to benefit from the legal protection of designs, must be assessed in the light of a situation of normal use of that complex product, so that the component part concerned, once it has been incorporated into that product, remains visible during such use. To that end, the visibility of a component part of a complex product during its ‘normal use’ by the end user must be assessed from the perspective of that user as well as from the perspective of an external observer, and that normal use must cover acts performed during the principal use of a complex product as well as acts which must customarily be carried out by the end user in connection with such use, with the exception of maintenance, servicing and repair work.

All clear? No? Same here. So let us try to make sense of it by going through the CJEU’s reasoning.

First, the CJEU confirmed that a saddle constitutes a component part of a complex product. The saddle can be replaced and the bike cannot be used without it. Further, the judges explained in detail and stressed that appearance is the decisive element of a design and that visibility constitutes an essential feature of design protection.

On that basis, the CJEU turned to the referred questions:

The first question: The interpretation of the visibility requirement

The CJEU held that the visibility requirement must not be assessed in abstracto, i.e. unconnected to any practical situation of use. Rather, the component part of the complex product must be visible to the end user, or an external observer, during ‘normal use’. The judges added that a component part need not remain fully visible the whole time during which the complex product is being used.

Sub-question (a) of the second question

The CJEU then turned to sub-question (a) of the second question, i.e. whether ‘normal use’ of a complex product corresponds to: (i) the use intended by the manufacturer of the component part, (ii) the use intended by the manufacturer of the complex product, or (iii) the customary use of the complex product by the end user.

According to the judges, the legislator intended to refer to the customary use of the complex product by the end user, thereby excluding the use of the complex product at other stages of trade and preventing circumvention of the visibility condition. The judges inferred from the legislator’s intention that the assessment of the ‘normal use’ of a complex product cannot be based solely on the intention of the manufacturer of the component part or of the complex product.

Sub-question (b) of the second question

In answering the question what ‘normal use’ by the end user is, the judges pointed out that the Design Directive does not specify the type of use covered by Art. 3(4) of the Design Directive, suggesting a broad interpretation of ‘normal use’. Therefore, ‘normal use’ covers all acts before, during and after using the complex product for its principal function, including storage and transportation, except use in relation to maintenance, servicing and repair works (excluded by Art. 3(4) of the Design Directive).

Comment

Applying the CJEU’s principles to the Supreme Court’s case, it seems obvious that the underside of the saddle is not visible to the user, or a third party observer, when riding the bike or motorcycle. Thus, a situation, such as in the picture immediately below, where one could conceivably see the underside of the saddle, probably would not constitute ‘normal use’ of a bike, at least not for the vast majority of people.

(Picture is by Anastasia Shuraeva and is used under licensing terms of Pexels)

That said, since the CJEU accepted visibility during transportation or storage, putting a bike up or down a roof rack for car transport allows the user to see the underside of the saddle: 

(Picture is by Oleksandr Pidvalnyi and is used under licensing terms of Pexels)

As such, this is arguably a common form for transport. It will be interesting to see how the German Supreme Court decides the case.