Design law: The visibility of component parts – referral to the ECJ

In a design infringement dispute before the Regional Court of Frankfurt a. M., the deciding question is the interpretation of the so-called visibility requirement. In order to enable a uniform treatment of case constellation that has not yet been decided by the highest court, the Frankfurt Regional Court suspended the legal proceedings for the purpose of clarification of nullity proceedings before the German Patent and Trade Mark Office (DPMA). Now, the ECJ is dealing with the case.

The subject of the dispute is the design protection claimed by the plaintiff in the infringement proceedings for the underside of a bicycle or motorbike saddle, specifically: the plastic plate on which the pad rests (“saddle underside”).

The central legal question is whether the industrial property right in the design of the saddle underside is null and void because it lacks the necessary novelty and individual character. Pursuant to § 4 of the German Design Act (DesignG), a design which is applied to or incorporated in a product which constitutes a component part of a complex product is only deemed to be new and to have an individual character if the component part, once it has been incorporated in such a complex product, remains visible during its normal use and these visible features of the component part in themselves fulfil the requirements as to novelty and individual character.

All courts involved in the legal dispute have so far agreed that a (bicycle/motorcycle) saddle is a component part that is incorporated into a complex product – a bicycle or motorbike – and that § 4 DesignG is therefore applicable.

In contrast to the DPMA in its decision rejecting the application for a declaration of invalidity, the Federal Patent Court (BPatG) ruled that under § 4 DesignG, only those component parts were amenable to design protection which remained “visible after installation/insertion into the complex product as its component”; the saddle was not to be viewed in its removed state. Furthermore, according to the BPatG, it is not a question of theoretical “visibility” – the only decisive question is whether “in the course of the intended use of the bicycle by the end user, a view of the underside of a bicycle saddle is caused or entailed”. 

According to the BPatG, in the case at hand, viewing a saddle from below is completely unusual in any intended use scenario and the design right in question is therefore null and void.

Upon appeal, the Federal Court of Justice suspended the proceedings and referred the following questions to the ECJ:

  1. whether a component part
    1. is “visible” within the meaning of said provisions if it is merely objectively possible to observe the design when the component part is installed, or
    1. whether it is the visibility under certain conditions of use or from a certain perspective of the viewer that matters?
  1. and whether, in the case of (1) b), the intended use is decisive for the assessment of the “intended use” by the end user of the complex product within the meaning of the Design Directive,
    1. which the manufacturer of the component part, or else
    1. the manufacturer of the complex product intends, or
    1. if instead the customary use of the complex product by the end user is decisive,

and finally

  1. which criteria are used to determine the “intended” use of a complex product by the end user.

According to the view taken here, the protective function under design law – which places a result of work under protection, which in its design differs from the known corpus of previous designs in a manner relevant to a purchase, provides the answer to the questions: Based on the positive answer to question (1) b), the use intended by the manufacturer of the complex product must be decisive (bicycles or motorbikes, for example, are always offered with a saddle), whereby the determination of a complex product follows from its nature and can therefore in no case – as however assumed erroneously by the DPMA – (also) be derived from how it is secured or the type of storage (= “non-use”) of the component part or the complex product.

The ECJ’s decision is still pending.

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