Clifford Chance

In its recent Judgment dated 16 February 2023 (Case C-472/21, Monz vs Büchel) the CJEU sets a broad interpretation of the meaning of "normal use" of complex products (i.e., products composed of multiple components, such as bicycles or motorbikes) for protecting the design applied to their components.

Covid lockdowns prompted, among other things, a boom of bicycle aficionados. Readers may very well have purchased a new bike in recent years and rediscovered the joy of escaping from the city, enjoying fresh air, and admiring beautiful landscapes, all while exercising. Or may simply have a friend (it is always a friend) who, after acquiring a stylish, modern bike, has boasted about its small details: "look at the style of the handlebars", "the pattern and shape of the disc brakes are remarkable", "the pedals are extremely light", "look at the underside of the saddle"…

The controversy that sparked this Court of Justice of the European Union ("CJEU") Case C-472/21 is, essentially, whether a design applied to the underside of a bicycle saddle can be subject to design protection.

Design protection of a component part of a complex product

Article 1 of Directive 98/71/EC ("Design Directive") defines a complex product as a "product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product" (e.g., a bicycle). But what is a component part? According to the CJEU's case-law, component parts of a complex product are those "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" (e.g., the saddle of a bicycle).

Pursuant to Article 3 of the Design Directive, the design applied or incorporated in the component part of a complex product can be protected by a design right to the extent that the component remains visible during normal use of the complex product and the visible features comply with the general novelty and individual character requirements. In this regard, Article 3 of the Design Directive clarifies that "maintenance, servicing or repair work" are expressly excluded from the concept of "normal use" by the end user.

Background to the dispute and referral to the CJEU

In the context of a controversy between the German entities Monz and Büchel, in which the latter tried to invalidate a design of the former protecting the underside of a bicycle saddle, the Bundesgerichtshof (Federal Court of Justice of Germany) considered that, before deciding if such design could be subject to design protection, it was necessary to clarify how the concepts of "visibility" and "normal use" of Article 3 of the Design Directive are to be interpreted.

In this regard, the German Federal Court of Justice referred two questions to the CJEU for a preliminary ruling, asking, in a nutshell, (i) whether the visibility requirement must be assessed on the basis of certain specific conditions of use of that complex product or certain observer perspectives, or, on the contrary, only based on the mere objective possibility of recognising the design applied to the component part integrated in the complex product (regardless of any condition of use or observer perspective); and (ii) what the relevant criteria are for determining the "normal use" of a complex product by the end user.

CJEU's decision

a) First Question: Visibility

The CJEU considered that an assessment of the visibility of the component part in abstracto, unconnected to any practical situation of use of the product, is not sufficient to allow a component part to benefit from protection as a design. However, the CJEU clarified that it is not necessary for a component part to remain fully visible during the whole time that the complex product is being used. Furthermore, the visibility requirement should not be assessed solely from the end user's point of view, but also on the visibility of such component part by an external observer.

b) Second Question: Normal Use by the End User

Regarding the interpretation of the concept of "normal use" by the end user, the CJEU first stated that the component part incorporated in a complex product must remain visible during the "normal" or "customary" use of that product. This means that the assessment of the concept of "normal use" cannot be based solely on the intention of the manufacturer of the component part or of the complex product, since the EU legislator's intention was to exclude from this concept the use of the product at other stages of trade (e.g. when supplying the component part for the end product, assembling it, etc.) that would make it extremely easy for manufacturers to circumvent the visibility requirement.

Finally, the CJEU reached the conclusion that, inasmuch as Article 3 of the Design Directive does not specify what type of use of such a product is covered by the concept of "normal use" by the end user, a broad interpretation of the concept had to be set. In this regard, the CJEU observed that the use of the principal function of a product often requires various acts which may be performed before or after the product has fulfilled that principal function (e.g., storage, transportation…). Therefore, "normal use" covers not only acts relating to the customary use of a product, but also other acts which may reasonably be carried out before, during or after such use and which are customary from the perspective of the end user (such as storage and transportation), with the sole exception of "maintenance, servicing or repair work" (expressly excluded by Article 3).

Comment

Even though the CJEU has given an ambitious interpretation of "normal use", it did not fully ratify the Opinion delivered by Advocate General Szpunar, who considered that even some customary maintenance-related acts constituted normal use that should not be excluded from protection (such as washing, cleaning, replacing consumables, operating fluids…).

Regardless, one can easily imagine acts of storage or transportation carried out before or after the customary use of riding a bike where the underside of the saddle is visible. Let's just picture a bike being placed on or taken down from a car rack (either mounted in the roof, the boot or a towbar). Therefore, with this Judgment the CJEU has opened the door to protecting designs incorporated in component parts of complex products which may not be visible at first glance.

This is welcome news for all the manufacturers of complex products who understand the inherent value that such small details in their components may entail, and for all the consumers who proudly boast about those small details of their newest acquisitions.