CELEX: 62021CJ0472
Reference for a preliminary ruling
Intellectual property
Design
Directive 98/71/EC
Article 3(3) and (4)
Conditions for obtaining protection for a component part of a complex product
Concepts of ‘visibility’ and ‘normal use’
Visibility of a component part of a complex product during normal use of that product by the end user

This request for a preliminary ruling concerns the interpretation of Article 3(3) and (4) of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (OJ 1998 L 289, p. 28).
The request has been made in proceedings between Monz Handelsgesellschaft International mbH & Co. KG (‘Monz’) and Büchel GmbH & Co. Fahrzeugtechnik KG (‘Büchel’) concerning an application for a declaration of invalidity of a registered national design filed by Büchel.

Legal context

European Union law

Directive 98/71
Recital 12 of Directive 98/71 states:
‘… protection should not be extended to those component parts which are not visible during normal use of a product, or to those features of such part which are not visible when the part is mounted, or which would not, in themselves, fulfil the requirements as to novelty and individual character; … features of design which are excluded from protection for these reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection’.
Article 1 of that directive, entitled ‘Definitions’, states:
‘For the purpose of this Directive:
(a)      “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation;
(b)      “product” means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs;
(c)      “complex product” means a product which is composed of multiple components which can be replaced permitting disassembly and reassembly of the product.’
Article 3 of that directive, entitled ‘Protection requirements’, provides as follows:
‘1.      Member States shall protect designs by registration, and shall confer exclusive rights upon their holders in accordance with the provisions of this Directive.
2.      A design shall be protected by a design right to the extent that it is new and has individual character.
3.      A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:
(a)      if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter, and
(b)      to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.
4.      “Normal use” within the meaning of paragraph 3(a) shall mean use by the end user, excluding maintenance, servicing or repair work.’
Article 5 of that directive, entitled ‘Individual character’, provides, in paragraph 1 thereof, as follows:
‘A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority.’

Regulation (EC) No 6/2002
Recitals 9 and 12 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1) read as follows:
‘(9)      The substantive provisions of this Regulation on design law should be aligned with the respective provisions in Directive [98/71].
…
(12)      Protection should not be extended to those component parts which are not visible during normal use of a product, nor to those features of such part which are not visible when the part is mounted, or which would not, in themselves, fulfil the requirements as to novelty and individual character. Therefore, those features of design which are excluded from protection for these reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection.’
Article 4 of that regulation, entitled ‘Requirements for protection’, provides:
‘1.      A design shall be protected by a Community design to the extent that it is new and has individual character.
2.      A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:
(a)      if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter, and
(b)      to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.
3.      “Normal use” within the meaning of paragraph 2(a) shall mean use by the end user, excluding maintenance, servicing or repair work.’

German law
Paragraph 1(4) and Paragraph 4 of the Gesetz über den rechtlichen Schutz von Design (Law on the legal protection of designs) of 24 February 2014 (BGBl. 2014 I, p. 122), in the version applicable to the dispute in the main proceedings (‘the DesignG’), transpose Article 3(3) and (4) of Directive 98/71.
Paragraph 1 of the DesignG, entitled ‘Definitions’, states in subparagraph 3 that a complex product is a product composed of several components which can be replaced permitting disassembly and re-assembly of the product. According to subparagraph 4, ‘normal use’ is defined as use by the end user, excluding maintenance, servicing or repair work.
Paragraph 4 of the DesignsG, entitled ‘Components of complex products’, provides that a design applied to or incorporated in a product which constitutes a component part of a complex product is to be considered to be new and to have individual character only if the component part, once it has been incorporated into the complex product, remains visible during normal use of that product and to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.

The dispute in the main proceedings and the questions referred for a preliminary ruling
Monz, a company incorporated under German law, is the holder of the design, registered since 3 November 2011 at the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office, Germany) (‘the DPMA’) for the products ‘saddles for bicycles or motorcycles’. That design is registered with a single representation showing the underside of a saddle as follows:
On 27 July 2016, Büchel, a company incorporated under German law, filed an application with the DPMA for a declaration of invalidity of the design at issue in the main proceedings, claiming that it did not meet the requirements for legal protection as a design under  Paragraph 4 of the DesignG. It argued, in particular, that that design applied to a saddle, which is a component part of a complex product such as a ‘bicycle’ or a ‘motorcycle’, was not visible during normal use of that product.
By decision of 10 August 2018, the DPMA rejected that application for a declaration of invalidity, holding that there were no grounds for excluding the design at issue in the main proceedings from protection under Paragraph 4 of the DesignG. According to the DPMA, although the bicycle saddle to which that design is applied is indeed a ‘component part of a complex product’, that component part nevertheless remains visible during normal use of that complex product. The DPMA took the view that normal use of such a product also covers ‘the disassembly and reassembly of the saddle for purposes other than maintenance, servicing or repair work’, the latter being included in an exhaustive list of uses excluded from that concept, within the meaning of Paragraph 1(4) of the DesignG.
Following an action brought by Büchel against that decision before the Bundespatentgericht (Federal Patent Court, Germany), that court, by decision of 27 February 2020, declared the design at issue in the main proceedings invalid on the ground that it did not meet the requirements of novelty and individual character. According to that court, under Paragraph 4 of the DesignG, only component parts which remain ‘visible, as component parts of the complex product, after they have been mounted/incorporated in it’ are automatically eligible to benefit from the legal protection of designs. Conversely, a component part which is visible only as a result of or at the time of its separation from a complex product cannot be regarded as satisfying the condition of visibility and cannot, therefore, benefit from that protection. In addition, that court considered only riding a bicycle and getting on and off a bicycle to be normal use within the meaning of Paragraph 1(4) of the DesignG. According to that court, during such use, the underside of the saddle is not visible either to the end user or to a third party.
Monz brought an appeal on a point of law against that decision before the Bundesgerichtshof (Federal Court of Justice, Germany), the referring court. That court considers that the outcome of the dispute in the main proceedings depends on how the concepts of ‘visibility’ and ‘normal use’, within the meaning of Article 3(3) and (4) of Directive 98/71, are to be interpreted.
The referring court states, first of all, that it shares the view of the Bundespatentgericht (Federal Patent Court) that, in accordance with the Court’s case-law, resulting in particular from the judgment of 20 December 2017,
Acacia and D’Amato
(C‑397/16 and C‑435/16, EU:C:2017:992, paragraph 64), a bicycle is a complex product and the saddle is a component part of that product.
The referring court considers that, for the purpose of resolving the dispute before it, it is necessary to determine, in the first place, whether the requirement of ‘visibility’ of a component part, once it has been incorporated into  the complex product, during ‘normal use’ of that product must be assessed by taking into account certain conditions of use of that product or certain observer perspectives or, on the contrary, only the objective possibility of recognising the design applied to the component part integrated in the complex product.
In that regard, the referring court states that, on the one hand, the Bundespatentgericht (Federal Patent Court) concluded that it would be necessary for the component part to remain visible to the end user or to a third party during normal use by the end user of the complex product in which that component part is incorporated. On the other hand, the applicant in the main proceedings claimed that it is sufficient, in order for the design to be protected, that it can be identified when the component part to which it is applied is integrated in the complex product. It is therefore irrelevant whether the design can easily be observed from a particular ‘perspective’.
In that context, the referring court raises the question of the interpretation of Article 3(3) and (4) of Directive 98/71, taking the view that the purpose of those provisions cannot be clearly deduced from that directive.
That court takes the view, inter alia, that the contention that a manufacturer who sees no benefit in visibly presenting a design has no interest in invoking the protection of that design is too simplistic, given that the design holder, the manufacturer of the component part and the manufacturer of the complex product are not necessarily one and the same.
Furthermore, it observes that, according to doctrine, that provision runs counter to the principle that a design’s eligibility for legal protection must already be established at the time of registration of the design concerned.
According to the referring court, those considerations support a strict interpretation of Article 3(3) and (4) of Directive 98/71.
However, that court considers that, although the meaning in everyday language of the word ‘visible’ suggests an objective comprehension referring to the possibility of identifying something, it cannot be inferred from the words ‘normal use’ that particular forms of observation of the complex product are excluded.
In the second place, it is necessary to determine the criteria which are relevant for the purpose of assessing the ‘normal use’ of a complex product by the end user, within the meaning of Article 3(4) of that directive.
In that regard, the question arises, in particular, whether, in the context of such an assessment, account should be taken of the use desired by the manufacturer of the component part or of the complex product or only of the customary use of the complex product by the end user.
The referring court considers that the definition of ‘normal use’ in Article 3(4) of Directive 98/71 may be understood as meaning that, for the EU legislature, any use by the end user of the complex product is, as a matter of principle, normal use, subject to the exceptions set out in that provision.
As regards the criterion of the use intended by the manufacturer of the component part or of the complex product, that court states that its application would, in its view, make it possible to avoid exclusion from legal protection for designs since the use of the complex product by end users would be irrelevant, while at the same time referring to its reservations with regard to that criterion mentioned in paragraph 21 above.
In the third place, the referring court asks whether only the principal use of the complex product is decisive or whether other uses of that product must, where appropriate, be taken into account.
In that regard, that court is in favour of a broad interpretation of Article 3(4) of Directive 98/71, in order to minimise the effects of Article 3(3) of that directive, which is considered by legal writers to be contrary to the logic of the system of design protection, and to avoid greater inequality of treatment between holders of designs covering component parts of complex products and the holders of other designs.
In those circumstances, the Bundesgerichtshof (Federal Court of Justice) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘(1)      Is a component part incorporating a design a “visible” component within the meaning of Article 3(3) of [Directive 98/71] if it is objectively possible to recognise the design when the component is mounted, or should visibility be assessed under certain conditions of use or from a certain observer perspective?
(2)      If the answer to Question 1 is that visibility under certain conditions of use or from a certain observer perspective is the decisive factor:
(a)      When assessing the “normal use” of a complex product by the end user within the meaning of Article 3(3) and (4) of [Directive 98/71], is it the use intended by the manufacturer of the component part or complex product that is relevant, or the customary use of the complex product by the end user?
(b)      What are the criteria for assessing whether the use of a complex product by the end user constitutes a “normal use” within the meaning of Article 3(3) and (4) of [Directive 98/71]?’

The questions referred
By its two questions, which it is appropriate to examine together, the referring court asks, in essence, first, whether Article 3(3) and (4) of Directive 98/71 must be interpreted as meaning that the requirement of ‘visibility’,  laid down in that provision,  that is to be met in order for a design applied to or incorporated in a product which constitutes a component part of a complex product to be eligible to benefit from the legal protection of designs, must be assessed on the basis of certain conditions of use of that complex product or only the objective possibility of recognising the design applied to the component part as integrated in the complex product and, second, what the relevant criteria are for determining the ‘normal use’ of a complex product by the end user.
Those questions are raised in proceedings arising from the application made by Büchel for a declaration that the design at issue in the main proceedings is invalid on the ground that it cannot benefit from legal protection as a design since the bicycle saddle, as a component part of a complex product such as a ‘bicycle’ or ‘motorcycle’, is not visible during normal use of that complex product.
It must be stated at the outset that, in the present case, the saddle of a bicycle or motorcycle constitutes a component part of a complex product, within the meaning of Article 3(3) of Directive 98/71, a bicycle or motorcycle constituting, in itself, a complex product within the meaning of Article 1(c) of that directive. A saddle may be replaced permitting disassembly and re-assembly of the bicycle or motorcycle and, without it, that complex product could not be subject to normal use (see, by analogy, judgment of 20 December 2017,
Acacia and D’Amato
, C‑397/16 and C‑435/16, EU:C:2017:992, paragraphs 64 to 66).
It should be borne in mind, in the first place, that, under Article 3(3) of Directive 98/71, read in the light of recital 12 thereof, a design applied to or incorporated in a product which constitutes a component part of a complex product is to be considered to be new and to have individual character only if the component part, once it has been incorporated into the complex product, remains visible during normal use of that product (point (a)) and the visible features of the component part fulfil in themselves the requirements as to novelty and individual character (point (b)).
Article 3(3) of Directive 98/71 thus lays down a special rule relating specifically to designs applied to or incorporated in a product which constitutes a component part of a complex product within the meaning of Article 1(c) of Directive 98/71.
Next, it is important to bear in mind that, in accordance with Article 1(a) of Directive 98/71, it is the appearance of the whole or part of a product which is the subject matter of the legal protection for designs under that directive.
In the context of the design protection provided for by Regulation No 6/2002, the Court has already held that appearance is the decisive element of a design and that the fact that a characteristic of a design is visible constitutes an essential feature of that protection (see, to that effect, judgments of 21 September 2017,
Easy Sanitary Solutions and EUIPO
v
Group Nivelles
, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraphs 62 and 63, and of 28 October 2021,
Ferrari
, C‑123/20, EU:C:2021:889, paragraph 30).
As regards, in particular, designs incorporated into a product which constitutes a component part of a complex product, the Court has stated that, in order for the appearance of the component part of a complex product to be protected as a design, it must, by definition, be visible and defined by features which constitute its particular appearance, namely by particular lines, contours, colours, shapes and texture. That presupposes that the appearance of that component part cannot be completely lost in the product as a whole (see, to that effect, judgment of 28 October 2021,
Ferrari
, C‑123/20, EU:C:2021:889, paragraphs 49 and 50).
In that regard, it must be held that those principles are applicable to the design protection system provided for by Directive 98/71.
Thus, Article 3(3)(a) of Directive 98/71 requires that, in order for a component part incorporated into a complex product to be eligible for protection as a design, that component part must remain visible during normal use of that product. Moreover, in accordance with recital 12 of that directive, protection should not be extended to those component parts which are not visible during normal use of a product, or to those features of such part which are not visible when that part is mounted, or which would not, in themselves, fulfil the requirements as to novelty and individual character.
That limitation of the legal protection of designs to the visible features of the component part concerned is explained by the fact that the appearance of that component part derives exclusively from those features.
Such an interpretation is supported by the broad logic of Directive 98/71 and by the objective pursued by Article 3(3) of that directive. Indeed, the protection of designs under that directive applies only to the characteristics which determine the appearance of the whole or part of a product. A visible component part necessarily contributes to the appearance of the complex product (see, by analogy, judgment of 20 December 2017,
Acacia and D’Amato
, C‑397/16 and C‑435/16, EU:C:2017:992, paragraph 73).
Furthermore, it is clear from the wording of Article 3(3)(a) of Directive 98/71 that, in order to benefit from the legal protection of designs, the component part, once it has been incorporated into the complex product, must remain visible ‘during normal use’ of that product.
It follows that an assessment
in abstracto
of the visibility of the component part incorporated into a complex product, unconnected to any practical situation of use of the product, is not sufficient to allow a component part to benefit from protection as a design under Directive 98/71. In that regard, it is necessary to clarify that Article 3(3) of Directive 98/71 nevertheless does not require a component part that is incorporated into a complex product to remain fully visible the whole time that the complex product is being used.
As the Advocate General stated in points 33 and 34 of his Opinion, the visibility of a component part incorporated into a complex product, within the meaning of Article 3(3) of Directive 98/71, read in conjunction with Article 3(4) thereof, cannot be assessed solely from the perspective of the end user of that product. In that regard, the visibility of such a component part to an external observer must also be taken into consideration.
In the second place, it must be borne in mind that, under Article 3(4) of Directive 98/71, the concept of ‘normal use’ of a complex product is defined as ‘use by the end user, excluding maintenance, servicing or repair work’. According to that definition, ‘normal use’ corresponds to use by the end user. It expressly excludes uses by the end user which form part of the maintenance, servicing or repair of the complex product.
In that regard, it must be determined whether the concept of ‘normal use’ of a product by the end user, within the meaning of Article 3(4) of Directive 98/71, corresponds to the use intended by the manufacturer or designer of the component part, to that intended by the manufacturer or designer of the complex product or to the customary use of the complex product by the end user.
As regards, first, the question whether the ‘normal use’ of a complex product corresponds to the use intended by the manufacturer of the component part, to that intended by the manufacturer of the complex product or to the customary use of that product by the end user, it must be stated at the outset that, in accordance with Article 3(4) of Directive 98/71, that provision covers the ‘normal use’ of the complex product by the end user.
In that regard, although the German-language version of Article 3(3) and (4) of Directive 98/71 uses, as a criterion of the visibility of a component part incorporated into a complex product, ‘use in accordance with its intended purpose’ (‘
bestimmungsgemäße Verwendung
’), other language versions of those same provisions, such as the English version (‘normal use’), the French version (‘
utilisation normale
’), the Italian version (‘
la normale utilizzazione
’), the Spanish version (‘
la utilización normal’
) and the Dutch version (‘
normaal gebruik’
), indicate that the component part incorporated in a complex product must remain visible during the ‘normal’ or ‘customary’ use of that product.
It should be noted that, as the European Commission pointed out, in essence, in its written observations, the normal or customary use of a complex product by the end user corresponds, as a general rule, to a use consistent with the intended purpose of the complex product, as intended by the manufacturer or designer of that product.
That said, as the Commission noted, in essence, with regard to the concept of ‘normal use’, the EU legislature intended to refer 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 assessment of the ‘normal use’ of a complex product, within the meaning of Article 3(3)(a) and (4) of Directive 98/71, cannot therefore be based solely on the intention of the manufacturer of the component part or of the complex product.
As regards, second, the question of what use of a complex product by the end user constitutes ‘normal use’ within the meaning of Article 3(4) of Directive 98/71, it is necessary to note at the outset that the fact that that provision does not specify what type of use of such a product is covered by that concept and refers, generally, to the use of such a product by the end user supports a broad interpretation of that concept.
In that regard, as the Advocate General stated in point 38 of his Opinion, 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. As a result, it must be held that ‘normal use’ of a complex product, within the meaning of Article 3(4) of Directive 98/71, covers all those acts, with the exception of those expressly excluded by that paragraph 4, namely acts relating to maintenance, servicing and repair work.
Accordingly, ‘normal use’, within the meaning of Article 3(4) of Directive 98/71, 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.
In the light of the foregoing considerations, the answer to the questions referred is that Article 3(3) and (4) of Directive 98/71 must be interpreted as meaning that the requirement of ‘visibility’,  laid down in that provision, that is to be met in order for a design applied to or incorporated in a product which constitutes a component part of a complex product to be eligible to benefit from the legal protection of designs, 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. 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.

Costs
Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the referring court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.
On those grounds, the Court (Fifth Chamber) hereby rules:
Article 3(3) and (4) of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs
must be interpreted as meaning that the requirement of ‘visibility’, laid down in that provision, that is to be met in order for a design applied to or incorporated in a product which constitutes a component part of a complex product to be eligible to benefit from the legal protection of designs, 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. 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.
[Signatures]
*
Language of the case: German.