Judges D Gratsias, M Ilešič (Rapporteur), I Jarukaitis, Z Csehi
Advocate General M Szpunar
The design holder registered a design representing the underside of a bicycle saddle with the German Patent and Trade Mark Office. The opponent applied to that office for a declaration of invalidity of the design on the ground that it did not meet the requirements for protection under German law transposing Parliament and Council Directive 98/71/EC since it applied to a component part of a complex product, namely a bicycle, and was not visible during normal use of that product. A design was only protected where it was new and had individual character. Under article 3(3) of the Directive, where the design constituted a component part of a complex product, those conditions were met only if: (a) the component part, once incorporated into the complex product, remained visible during normal use of the product; and (b) those visible features of the component part were, themselves, new and had individual character. The phrase “normal use” was defined under article 3(4) as “use by the end user, excluding maintenance, servicing or repair work”. The application for invalidity was dismissed and the opponent’s appeal against that dismissal was allowed. On the design holder’s appeal, the Federal Court of Justice, Germany stayed the proceedings and referred to the Court of Justice of the European Union for a preliminary ruling the questions, in essence, whether: (i) in order for a design which constituted a component part incorporated into a complex product to be eligible for protection within the meaning of article 3(3) of Directive 98/71, the component part had to be visible when the complex product was in “normal use”; and (ii) “normal use” under article 3(4) of Directive 98/71 included all situations which might reasonably arise during its principal use.
On the reference—
Held, (1) the principles under Council Regulation (EC) No 6/2002 on Community designs in the context of design protection were applicable to the design protection system provided for by Directive 98/71. In order to benefit from the legal protection of the Directive, the issue of visibility during normal use of a component part incorporated into a complex product had to be assessed against the practical use of the product and not merely from an abstract point of view; and from the perspective of both the end user of the product and an external observer. Accordingly, article 3(3)(a) and (4) of Directive 98/71 meant that, in order for a design which constituted a component part of a complex product to benefit from the legal protection of designs, the component part that had been incorporated into the product had to remain visible during normal use of that product. As a general rule, the “normal” or customary use of a complex product by the end user corresponded to the use as intended by the manufacturer or designer of that product. However, by article 3 of Directive 98/71, the EU legislature referred to the customary use of the complex product by the end user, in order to exclude the use of that product at other stages of trade and thus to prevent circumvention of the visibility condition. The phrase “normal use” of a complex product, within the meaning of article 3(4), covered acts relating to the customary use of the product as well as other acts which were reasonably carried out during such use, including those performed before or after the product had fulfilled its principal function, such as the storage and transportation of that product, subject to the exceptions of “maintenance, servicing and repair work” (judgment, paras 38–40, 45, 46, 49, 51–55, 56, operative part).
C Rohnke and T Winter for the design holder.
M Pilla for the opponent.
E Gippini Fournier, J Samnadda and T Scharf, agents, for the European Commission.