INTA Questions ‘Visibility’ Requirement in EU Case Law in Amicus Brief

INTA filed an amicus curiae brief with the Court of Justice of the European Union (CJEU) for the case C-472/21, Monz Handelsgesellschaft lnternational mbH & Co. KG v. Büchel GmbH & Co. Fahrzeugtechnik KG on December 2. The case concerns a design, registered under the German Design Protection Act, for a component part of a complex product and, in particular, a design on the underneath part of saddles for bicycles and motorcycles.

The case raises the question of how the “visibility” requirement in Articles 3(3) and 3(4) of the Directive 98/71/EC on the legal protection of designs (the Directive) is to be interpreted in relation to such component parts. Does the underneath part of saddles for bicycles and motorcycles fulfill the visibility criterion? And, if so, is the design at issue eligible for or excluded from protection?

Legal Framework

Article 1 of the Directive states that a design is the “appearance of the whole or a part of a product.” The concept of “appearance” in the field of simple product designs is analogous to the concept of “visibility” under Article 3(3) of the Directive in the field of component parts. The provisions of the Directive are analogous to those of the Designs Regulation.

Protection in relation to component parts is only granted under the condition of visibility. Such visibility, per the Directive, must occur during normal use, namely, “use by the end user, excluding maintenance, servicing, or repair work.”

According to the Directive, a design on or in a component part of a complex product shall be excluded from protection if it is no longer visible when incorporated into the product. With regard to features of the component parts, these are excluded from protection when they are not visible after the component part is mounted.

The historical background is also to be taken into account: the purpose of the provision was to exclude from protection inner parts of motor vehicles and to prevent abuse of design protection through monopolizing components which are not visible when mounted.

Analysis

The rationale behind the restrictions imposed on components of complex products triggers questions as to the appropriateness and proportionality of such restrictions in comparison to the principles of design protection on simple products. Furthermore, there is an implied contradiction between the requirement of “visibility” and the further specification “during normal use” as well as the three exceptions of maintenance, servicing, or repair.

In the case at issue, the cleaning of a bicycle by putting it upside down could well be regarded as “service.” INTA submits that this could be resolved by an interpretation that “visible during normal use” only specifies a situation where the complex product is assembled or disassembled for any “normal use by the end user” (excluding, in particular, visibility only when disassembled for professional maintenance, servicing, or repair).

INTA’s Position

In its brief, INTA argued that an abstract concept of “visibility” serves best to align the rules on the protection of components of complex products to the rules on the design protection of simple products. The term “visible” should be interpreted in an objective manner, applicable to any kind of complex product and independent of the subjective qualities of a specific user or ocular angle. When the design in or on the part is visible, irrespective of whether it is visible at any and all times, from any and all angles, and at any and all circumstances, protection shall apply, subject to the exceptions mentioned expressly in the law (visible during maintenance, service, or repair). “Visible” shall therefore be understood as a contrario to “hidden,” such as when the part is completely enclosed in the product.

The Designs Committee supported the International Amicus Committee—Europe Subcommittee in the preparation of the brief.

Andreas Lubberger (Lubberger – Lehment, Germany) authored the brief with contributions from Noemi Parrotta (Spheriens, Italy), Marina Perraki (Tsibanoulis & Partners, Greece), and Christian Schumacher (Schoenherr, Austria) of the International Amicus Committee—Europe Amicus Subcommittee, and Tanguy de Haan (NautaDutilh SRL, The Netherlands) and Christian Spintig (Heuking Kühn Lüer Wojtek, Germany) of the Designs Committee.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2021 International Trademark Association