Are consumables component parts of a complex product?

A design for a component part of a complex product can enjoy design protection in the EU only if the component part remains visible during normal use of the complex product (Art. 4(2)(a) of Regulation 6/2002, ‘Design Regulation’). This Kat recently discussed the Monz judgment of the Court of Justice of the EU (‘CJEU’) regarding the interpretation of the requirements of ‘visibility’ and ‘normal use’ here. But when is a design a component part of a complex product? This is explored by the General Court it its judgment B&Bartoni v EUIPO (case T-617/21).

Background

The US company Hypertherm, Inc. owns the following Registered Community Design (‘RCD’) no. 1292122-0001 for ‘welding torches (part of -)’:

It shows an electrode for welding torches. The Czech company B&Bartoni spol. s r.o. filed an invalidity application against this RCD, arguing that the electrode is a component part of the complex product welding torch. Since the electrode is not visible during normal use of the torch, it cannot enjoy design protection.

The Invalidity Division of EUIPO agreed with B&Bartoni and declared the RCD invalid. The Board of Appeal reversed the decision and rejected the invalidity application (discussed here). It found that the electrode displayed in the RCD does not constitute a component part of a welding torch. B&Bartoni appealed to the General Court.

The General Court’s decision

The General Court agreed with the Board of Appeal.

First, the Court held that the requirement that a component part of a complex product must remain visible during normal use of the complex product (Art. 4(2)(a) Design Regulation) must be interpreted narrowly, as all exceptions to design protection.

The judges referred to the Acacia decision, where the CJEU defined the term ‘component part of a complex product’ in paragraph 65 of the judgment as covering—

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.

In assessing whether an electrode is a component part of a welding torch, the General Court considered the following aspects:

1. The consumable nature of the electrode

An electrode is a consumable, which lasts for about two to five hours and lacks a firm and durable connection with the welding torch. It must be purchased and replaced regularly. The replacement is fairly easy to carry out and is usually done by the end user. The Court also took into account that the user is able to perceive and assess the electrode’s characteristics, irrespective of whether the electrode remains visible once it is inserted into the welding torch.

The judges considered these factors to argue against the electrode being a component part.

2. No disassembly and re-assembly when replacing the electrode

The Court referred to the definition of a ‘complex product’, being a product composed of multiple components that can be replaced by permitting disassembly and re-assembly of the product (Art. 3(c) Design Regulation). The judges inferred from this definition that a product is less likely to constitute a component part of a complex product if its replacement does not require the disassembly and re-assembly of the product in which it is incorporated, and if it is specifically intended to be replaced regularly and in a straightforward manner by end users.

The replacement process of the electrode entails unscrewing the shield, the retaining cap and the nozzle of the torch and putting them back again after the electrode has been replaced. The Court did not consider this to be disassembly and re-assembly of the welding torch because of its simplicity.

This spoke in favour of the electrode not being a component part.

3. The welding torch is complete without the electrode

The judges also took the perception of the relevant public into account. A complex product would be considered as incomplete without one of its component parts. It would also be unusual that a complex product can be purchased without all its component parts.

Welding torches are offered without electrodes, which are sold separately. As such, the judges reasoned, the relevant public does not perceive the welding torch without an electrode as “broken or incomplete”.

B&Bartoni’s argument that the torch cannot be used without the electrode was dismissed because such an interpretation is overbroad and would exclude a significant number of products from design protection.

4. The interchangeability of the electrode

Finally, the Court considered relevant that Hypertherm’s electrodes are compatible with welding torches from other companies, and that Hypertherm’s welding torches are compatible with electrodes from other companies.

The Court derived from this that a product, which cannot be replaced by another non-identical product or cannot be used in different complex products, is more likely to be connected in a “durable and tailored manner” to the complex product, and thus to constitute a component part of the complex product.

Comment

This judgment provides valuable guidance for assessing whether a design protects a component part of a complex product. Generally speaking, accessories and consumables are unlikely to constitute component parts of a complex product. The General Court’s finding arguably also applies to goods such as replaceable batteries, coffee filters, and vacuum cleaner bags.

The general principle of interpreting exceptions to design protection narrowly, reiterated by the General Court, suggests that, in cases of doubt, a product will be deemed not a component part of a complex product, this in order to prevent the exclusion of a disproportionate number of designs from enjoying protection.