1. According to Art. 3(3) of the Design Directive, a design which is used in or incorporated into a product which is a component part of a complex product is considered to be new and to have individual character only if the component part incorporated into the complex product remains visible during its normal use of the latter and to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.
Furthermore, “normal use” is defined in Art. 3(4) Design Directive as use by the end user, excluding maintenance, servicing or repair work.
These requirements of the Design Directive were implemented by the German legislator for national designs in Sec. 1 No. 4 and Sec. 4 German Design Act (DesignG) and correspond to Art. 4(2) and (3) of Regulation (EC) No. 6/2002 on Community designs (CDR).
2. The request for a preliminary ruling by the BGH was preceded by invalidity proceedings at the German Patent and Trademark Office (DPMA) against a German design which, registered with a single representation, shows the underside of a saddle as photographed below. The product indication is “saddles for bicycles or motorcycles” (para. 12).
(picture shown in the newsletter)
The DPMA rejected the application for a declaration of invalidity. The bicycle saddle is a “component of a complex product” which remains visible when the complex product (bicycle) is used as intended. The normal use of a bicycle also includes “dismounting and mounting the saddle for purposes other than maintenance, servicing or repair work” (para. 14).
In the appeal instance, the Federal Patent Court (BPatG) declared the challenged design to be invalid. In its reasoning, it stated that a component is only eligible for legal design protection if it remains visible after incorporation into the complex product. On the other hand, a component that only becomes visible when separated from a complex product cannot claim protection. In the present case, the assessment of the visibility of the component element had to be based on the normal use of the complex product “bicycle”, which only included riding the bicycle and getting on and off. In the context of this use, however, the underside of the saddle was visible neither to the end user nor to a third party (para. 15).
3. In the appeal on points of law, the BGH referred the following questions to the CJEU for a preliminary ruling pursuant Article 267 TFEU (para. 31):
(1) Is a component part incorporating a design a “visible” component within the meaning of Article 3(3) of the Design Directive 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 within the meaning of Article 3(3) and (4) of the Design Directive, is it the use intended by the manufacturer of the component part or complex product that is relevant, or 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 a “normal use” within the meaning of Article 3(3) and (4) of the Design Directive?
4. In its decision, the CJEU states at the outset (para. 34) that a bicycle or a motorcycle constitutes a complex product within the meaning of Art. 1(c) Design Directive (@ 1 No. 3 DesignG or Art. 3(c) CDR) and that the saddle is a component part of this complex product. A saddle can be replaced so that the bicycle or motorcycle can be disassembled and reassembled, and without the saddle a bicycle cannot be used as intended.
Regarding the first question of the BGH, the CJEU refers to its earlier decision “Ferrari front kit” of October 28, 2021 (C-123/20, we reported in our newsletter of March 2022), in which it had already stated with regard to Community designs that the appearance is the decisive feature of a design and that the fact that a characteristic of a design is visible constitutes an essential feature of that protection (para 38). In addition, in the “Ferrari front kit” decision, it had stated that a design which is incorporated into a product which constitutes a component part of a complex product must, in order to claim protection, be visible and defined by features which constitute its particular appearance, namely by particular lines, contours, colours, shapes and texture. That presupposes that the appearance of this component element cannot be completely lost in the product as a whole (para. 39).
The CJEU further states that Art. 3(3)(a) of the Design Directive also requires that a component part incorporated into a complex product must remain visible during normal use of that product to be eligible for protection. Furthermore, it is clear from the recitals of the Design Directive that protection should not extend to components which are not visible during normal use of a product, or to those features of such part which are not visible when the component is mounted, or which would not, in themselves, fulfil the requirement as to novelty and individual character (para. 41).
Against this background, the CJEU states that an assessment in abstracto of the visibility of the component part incorporated into a complex product, unconnected to any particular situation of use of the product, is not sufficient to allow a component part to benefit from protection. However, Article 3(3) of the Design Directive does not require that a component part that is incorporated into a complex product to remain fully visible the whole time that the complex product is being used (para. 45).
5. With regard to the second question of the BGH, the CJEU first states that the visibility of a component incorporated into a complex product is not to be assessed solely from the perspective of the end user of this product. In that regard, the visibility of such a component part to an external observer must also be taken into account (para. 46). Furthermore, Art. 3(4) of the Design Directive clarifies that “normal use” explicitly excludes uses by the end user that fall under maintenance, servicing or repair of the complex product (para. 47).
In that regard, it must be determined whether the concept of “normal use” of a product by the end user corresponds to (i) the use intended by the manufacturer or designer of the component part, (ii) the use intended by the manufacturer or desiner of the complex product, or (iii) the customary use of the complex product by the end user (para. 48).
The CJEU pointed out that while the German language version of Art. 3(3) and (4) of the Design Directive mentions “use in accordance with its intended purpose” as a criterion for the visibility of a component part incorporated in a complex product, other language versions of the Design Directive refer to a “normal” or “customary” use of the product, such as in English (“normal use”), French (“utilisation normale”), Italian (“la normale utilizzazione”), Spanish (“la utilización normal”) or in Dutch (“normaal gebruik”) (para. 50).
Against this background, the CJEU concludes that the EU legislature intended to refer to the customary use of the complex product by the end user, in order to exclude the use of this product at other stages of trade and thus to prevent circumvention of the visibility condition. The assessment of the “normal use” of a complex product could therefore not be based solely on the intention of the manufacturer of the component part or of the complex product (para. 52).
6. Regarding the question of which use of a complex product by the end user constitutes a “normal use” within the meaning of Art. 3(4) of the Design Directive, the CJEU advocates a broad interpretation of this term (para. 53). The use of a product in accordance with its principal function often requires in practice various acts which may be performed before or after the product has fulfilled that principal function, such as the storage and transportation of the product. Consequently, the “normal use” of a complex product is considered to include all of these acts, with the exception of those expressly excluded in Art. 3(4) of the Design Directive, namely acts relating to maintenance, servicing or repair work (para. 54).
Accordingly, a “normal use” must cover acts relating to the customary use of a product as well as other acts which may reasonably be carried out during such use and which are customary from the end user’s perspective, including those acts which may be performed before or after the product has fulfilled its principal function (para. 55).
7. Against this background, the CJEU answers the questions posed by the BGH as follows (para. 56):
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.
8. The CJEU rejects the narrow interpretation of the term “normal use” adopted by the BPatG. It nevertheless remains to be seen how the BGH will rule in the specific case. This will largely depend on whether the BGH confirms the visibility of the underside of the saddle of a bicycle in the context of acts that could reasonably be carried out before or after the riding as a principal function of a bicycle, such as lifting the bicycle for the purpose of storage or transportation.
