Article 4(2) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs provides that a design which constitutes a component part of a complex product shall be considered new and shall have individual character if the component part incorporated in the complex product remains visible during normal use of that product. This corresponds to recital 12 of that Regulation, according to which protection should not extend to component parts which are not visible during normal use of the product nor to component parts which are not visible when the part is installed. Analogous provisions are contained in Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (Article 3(3) and (4)).

Against the background of the provisions of Directive 98/71/EC, the CJEU, in Case C-472/21, ruled on how visibility is to be understood in the provisions of Article 3(3) and (4) of the Directive.

Proceedings before the national court:

Monz is the company being the owner of a German design representing saddles for bicycles and motorbikes.

Another German company, Büchel, claimed invalidity of this design claiming that it is a component part of a bicycle or motorbike and the saddle is not visible during normal use of that product.

A problem was identified in the course of the main proceedings as to the interpretation of the concepts of 'visibility’ and 'ordinary use’. The referring court wondered whether visibility during normal use must be assessed by taking into account the conditions of use of the product in question or a particular perspective of vision, or whether the objective possibility of recognising the design is sufficient. It therefore referred questions to the CJEU for a preliminary ruling.

CJEU judgement:

In its judgment of 16 February 2023 (ref. C-472/21), the Court ruled that Article 3(3) and (4) of Directive 98/71/EC must be interpreted as meaning that, in order for a design applied to or incorporated in a product which constitutes a component part of a complex product to be eligible for design protection, the requirement of „visibility” referred to in that provision must be assessed in the light of the situation of normal use of that complex product, so that the component part in question, once it has been incorporated into that product, remains visible during such use. To this end, the visibility of a component of a complex product during its „ordinary use” by the end-user should be assessed from the point of view of that end-user and of an external observer, whereby this ordinary use should include the activities carried out during the principal use of the complex product, as well as activities that must customarily be carried out by the end-user in the course of such use, with the exception of maintenance, servicing and repair activities.

The CJEU emphasised that Directive 98/71/EC does not require that a component part incorporated into a complex product must remain visible in its entirety at all times during the use of that product. It also indicated that: “in practice, use of a product in its principal function often requires various acts which may be performed before or after the product has fulfilled that principal function, such as the storage and transportation of that product”.

Thus, the mere 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 perspective of the end user, including those which may be performed before or after the product has fulfilled its principal function, such as the storage and transportation of that product”.

Comment:

In the context of component parts of products, the issue often arises as to whether the design used is sufficiently visible to be protected. This is particularly relevant in the context of devices that are not visible to the user in their entirety. The CJEU judgment discussed here provides important guidance on how the concept of visibility should be interpreted in this type of cases.