The EU Court of Justice (CJEU) has given two judgments recently in referrals from EU national courts about how to interpret EU design law. The cases concern component parts of complex products and technical functionality.
Component parts of complex products
Case C-472/21 concerned Monz’s registered design for a bicycle saddle. Büchel applied for a declaration of invalidity on the basis that the design was not visible during normal use of the product (a bicycle or motorcycle). We previously covered the Advocate General’s Opinion in the case (When is a product a component part of a complex product?).
In its judgment, the CJEU said that the visibility requirement in Article 3 of the Designs Directive “must be assessed in the light of a situation of normal use of that complex product, so that the component part concerned, once it has been incorporated into that product, remains visible during such use”. It added:
“To that end, the visibility of a component part of a complex product during its ‘normal use’ by the end user must be assessed from the perspective of that user as well as from the perspective of an external observer, and that normal use must cover acts performed during the principal use of a complex product as well as acts which must customarily be carried out by the end user in connection with such use, with the exception of maintenance, servicing and repair work.”
The Court explained that a component part of a complex product is not required to remain fully visible all the time the product is being used. In other words, normal use should be interpreted broadly, including acts that may reasonably be carried out before or after the product has fulfilled its principal function such as storage and transportation.
While it will be for the national court to decide, this suggests that the saddle design is valid as it is visible when the bicycle is being stored or carried, despite not being visible when the bicycle is ridden.
Technical function
Case C-684/21 concerned a registered Community design for a packing device. The Higher Regional Court of Düsseldorf found it to be invalid, on the ground that all of its features were dictated by the technical function of the product, based in part on a patent application.
The German Federal Court of Justice set aside that judgment, saying the lower court should have examined whether visual considerations had not also played a role in the choice to configure the product concerned as consisting of two components, because it makes possible the two-colour appearance, as the product actually marketed demonstrates. It also found that the owner of the design, Sprick, had a number of designs for alternative forms which pursue the same technical function. The Düsseldorf court then referred three questions to the CJEU.
The CJEU ruled that, under Article 8(1) of the Designs Regulation, the assessment of technical function:
“must be made having regard to all of the objective circumstances relevant to each case, inter alia those dictating the choice of features of appearance, the existence of alternative designs which fulfil the same technical function, and the fact that the proprietor of the design in question also holds design rights for numerous alternative designs, although that latter fact is not decisive for the application of that provision.”
It also ruled that “in the assessment as to whether the appearance of a product is dictated solely by its technical function, the fact that the design of that product allows for a multicolour appearance cannot be taken into account in the case where that multicolour appearance is not apparent from the registration of the design concerned.”
This is the latest judgment to address aspects of technical function, which we have previously discussed here.
Evolution of design law
These two recent cases illustrate how EU design law continues to develop. Following Brexit, UK courts no longer have to follow CJEU precedents so divergence between EU and UK design protection is likely to increase.
There will be further divergence once the proposed EU design reforms (which we blogged about here) come into force.
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