The Advocate General (AG) of the EU Court of Justice (CJEU) has addressed one of the thorny issues in EU design law in a case involving a registered design for a bicycle saddle.
The case concerns component parts of complex products, for which protection is available only if the component remains visible during use of the complex product of which it forms part and if its visible parts have the required features of novelty and individual character. These requirements aim to restrict the availability of design protection for motor vehicle spare parts.
Application for invalidity
This case concerns a German registered design owned by Monz Handelsgesellschaft International GmbH & Co. KG (pictured). It was subject to an invalidity attack on the ground that it was not visible during normal use (as it represents the underside of a saddle).
The application for a declaration of invalidity was initially rejected. But the German Federal Patent Court overturned that decision, saying that the underside of a saddle is not visible to either the end user or another person.
On appeal, the Federal Court of Justice referred two questions to the CJEU, asking essentially how to assess visibility and what constitutes normal use.
AG takes broad approach
In his Opinion, Advocate General Szpunar proposed that the answer to the first question should be that the Directive must be interpreted to mean that “for a design applied to or incorporated in a product which constitutes a component part of a complex product to be eligible for protection under that directive, the component in question must be visible in the situation of normal use of that complex product”.
The crucial question in this case, therefore, is: what is the meaning of “normal use”?
In particular, AG Szpunar addressed whether “normal use” refers only to the use of the complex product in its principal function or whether it covers all situations that may reasonably arise during use by the end user.
He pointed out that the narrower approach would mean that a bicycle saddle could not be protected by a design “since during the principal use of a bicycle, when it is being ridden, the saddle is fully covered by the part of the user’s body that is used for sitting, except for the underside of the saddle, which nevertheless remains invisible in any case”.
He therefore preferred to take a broader approach, stressing the importance of acknowledging the perspective of persons other than the end user, and including in the concept of “normal use” acts other than the use of a product in its principal function alone. He added:
“If a design applied to the underside of the sole of a shoe is eligible for protection under the directive, I cannot see why a design applied to the underside of a bicycle saddle, as in the present case, could not be.”
He therefore proposed that “normal use” should refer to “all situations which may reasonably arise during use of a complex product by the end user”. He explained that this broad interpretation encompasses “almost all situations of use of a product, except for those entailing its disassembly if that is not part of normal use”.
A change of direction?
This is a clear and bold Opinion by the Advocate General, which would expand the protection available to designs for component parts, and is much less strict than the approach taken by the EU General Court in other cases.
It will be very interesting to see if the Court of Justice of the European Union follows this Opinion in its judgment, which should be handed down at some point in 2023.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com