Opinion of the Advocate General — ECLI:EU:C:2022:656
Date: 2022-09-08
Language of the case: German
Subject matter: Intellectual, industrial and commercial property;Approximation of laws;Designs
Procedure: Reference for a preliminary ruling
Origin: Germany

Summary C-472/21 – 1 
Case C-472/21 
Summary of the request for a preliminary ruling pursuant to Article 98(1) of 
the Rules of Procedure of the Court of Justice 
Date lodged: 
2 August 2021 
Referring court: 
Bundesgerichtshof (Germany) 
Date of the decision to refer: 
1 July 2021 
Owner of the design and appellant on a point of law: 
Monz Handelsgesellschaft lnternational mbH & Co. KG 
Applicant and respondent in the appeal on a point of law: 
Büchel GmbH & Co. Fahrzeugtechnik KG 
  
Subject matter of the main proceedings 
Directive 98/71 on the legal protection of designs – Component part of a complex 
product – Underside of a saddle for bicycles or motorcycles – Interpretation of the 
term ‘visible’ within the meaning of Article 3(3) of the Directive – Criteria for 
assessing the ‘normal use’ of a complex product 
Subject matter and legal basis of the request 
Interpretation of EU law, Article 267 TFEU 
Questions referred 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/EC 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? 
EN 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-472/21 
 
2  
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/EC, 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/EC? 
Provisions of international law relied on 
Agreement on Trade-Related Aspects of Intellectual Property Rights (‘the TRIPS 
Agreement’), specifically Article 26 
Provisions of EU law relied on 
Charter of Fundamental Rights of the European Union (‘the Charter’), in 
particular Article 17 
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), specifically 
Article 3(3) and (4). 
Provisions of national law relied on 
Gesetz über den rechtlichen Schutz von Design (Law on the legal protection of 
designs, ‘the DesignG’), in particular Paragraphs 1(4) and 4 
Succinct presentation of the facts and procedure in the main proceedings 
1 Design No 40 2011 004 383-0001 for the products ‘saddles for bicycles or 
motorbikes’ has been registered to the owner of the design at the Deutsches 
Patent- und Markenamt (German Patent and Trade Mark Office) since 2011, with 
the following single representation showing the underside of a saddle: 
MONZ HANDELSGESELLSCHAFT INTERNATIONAL 
 
3 
 
2 On 27 July 2016, the applicant lodged an application for a declaration of invalidity 
of the design. It claims that the design did not meet the requirements for 
protection as to novelty and individual character. In particular, it was excluded 
from protection under Paragraph 4 of the DesignG because, as a component part 
of the complex products ‘bicycle’ and ‘motorcycle’, it was not visible during the 
normal use thereof. 
3 The Design Division of the German Patent and Trade Mark Office rejected that 
application. The Bundespatentgericht (Federal Patent Court, Germany) declared 
the design invalid when the applicant lodged an appeal. The appeal on a point of 
law brought by the owner of the design challenges that decision. 
Succinct presentation of the reasoning in the request for a preliminary ruling 
4 The outcome of the appeal on a point of law depends on the interpretation of 
Article 3(3) and (4) of Directive 98/71, which has been transposed into German 
law by Paragraph 4 in conjunction with Paragraph 1(4) of the DesignG. 
5 Pursuant to Article 3(3) of Directive 98/71, a design applied to or incorporated in 
a product which constitutes a component part of a complex product can 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. Under Article 3(4) of Directive 98/71, ‘normal use’ within the meaning 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-472/21 
 
4  
of paragraph (3)(a) means use by the end user, excluding maintenance, servicing 
or repair work. 
6 The interpretation of the concepts ‘during normal use’ and ‘visible’ in Article 3(3) 
and (4) of Directive 98/71 is not unequivocally clear and thus requires 
clarification by the Court of Justice of the European Union. 
7 It is not unambiguously clear from the requirements of EU law whether the 
requirement for a component part of a complex product to remain ‘visible during 
normal use of the latter’ involves a limitation to certain conditions of use and a 
certain observer perspective, or whether the objective possibility of identifying the 
design when the component part is mounted is sufficient. This is to be clarified by 
the first question referred. 
8 The Federal Patent Court deemed that it was necessary for the component part to 
remain ‘visible’ to the end user or a third party during normal use by the former. If 
‘visible’ was understood in the sense of ‘capable of being seen’, it was sufficient 
that the generally open and uncovered underside of a bicycle saddle, unlike a 
component part completely incorporated into a complex product, could be 
completely or at least partially seen externally with a single glance from below, 
including during normal use. However, it was not the subject matter of the 
application that had to be considered, but the use of the complex product. During 
normal use of the complex product ‘bicycle’ by an end user, the underside of a 
bicycle saddle was not visible either to the end user or to a third party. 
9 It is argued in the appeal on a point of law that, in order for a design to be eligible 
for protection, it is sufficient for it to be recognisable when the component part is 
mounted. Visibility is only lacking if the design, as part of a complex product, is 
completely hidden in the external form that said product takes during normal use. 
It is irrelevant whether the design is easy to see when viewing the complex 
product from a supposedly typical perspective, or whether an unusual body 
posture has to be adopted in that respect. Visibility under certain conditions (of 
use) cannot be determinative, because very small components can only be seen 
close up and movable parts can only be seen when still. 
10 The referring court has doubts as to whether this interpretation of Article 3(3) of 
Directive 98/71 is correct. 
11 The legislative history of Directive 98/71 suggests that exempting internal 
components of motor vehicles through special provisions to protect designs has a 
strictly limited regulatory purpose, namely seeking to prevent abuse of design 
protection aimed at monopolising components which are not visible when 
mounted. 
12 However, those aspects are incorporated neither in the wording of Article 3(3) and 
(4) of Directive 98/71 nor in its recitals. The purpose of those provisions is not 
clear from the Directive. 
MONZ HANDELSGESELLSCHAFT INTERNATIONAL 
 
5 
13 The rule set out in Article 3(3) and (4) of Directive 98/71 has been criticised by 
academic writers, who argue that it is incompatible with the system because it 
does not take account of the appearance of the design, but of the use of the 
product into which the design is incorporated. It thus contradicts the principle that 
a design’s eligibility for protection must be established as soon as it is registered, 
and infringes fundamental rights, specifically rights pertaining to the protection of 
intellectual property under the first and third sentences of Article 17(1) and 
Article 17(2) of the Charter. Moreover, it conflicts with Article 26(2) of the 
TRIPS Agreement, which also applies to the European Union. 
14 Those arguments could militate in favour of a strict interpretation of Article 3(3) 
and (4) of Directive 98/71. 
15 The question nevertheless arises as to whether the interpretation of Article 3(3) of 
Directive 98/71 advocated in the appeal on a point of law is covered by the 
wording thereof. It is true that the general meaning of the word ‘visible’ suggests 
an objective interpretation relating to the ability to be seen. However, the 
argument that the concept of ‘normal use’ in Article 3(4) of Directive 98/71, in its 
first part (‘use by the end user’) merely described the overall external appearance 
of the complex product in question and, in its second part (‘excluding 
maintenance, servicing or repair work’) merely excluded perspectives that only 
enabled the interior of the complex product to be seen, disregards the fact that the 
phrase ‘normal use’ in Article 3(3)(a) of Directive 98/71 is preceded by the word 
‘during’. This conjunction suggests that the visibility of the design in a situation of 
use should be taken into account. 
16 If the answer to Question 1 is that ‘visibility’ within the meaning of Article 3(3) of 
Directive 98/71 does not depend solely on the objective possibility of recognising 
the design when the component part is mounted, but that certain conditions of use 
or observer perspectives must be considered, the further question arises as to 
whether, when assessing the ‘normal use’ of a complex product by the end user 
within the meaning of Article 3(3) and (4) of the Directive, it is 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. That is what Question 
2(a) seeks to clarify. 
17 The Federal Patent Court stated that the decisive factor was the normal use of the 
complex product by the end user, excluding maintenance, servicing or repair 
work. The end user was only the rider of the bicycle, not a passenger or a third 
party looking at the bicycle. The ‘normal’ use of a bicycle, to be defined from the 
manufacturer’s point of view, was its use as a mode of transport; this covered the 
process of riding and getting on and off. During these actions, the underside of the 
saddle was completely covered by its upper side and side parts. It was visible only 
‘from below’, which, however, is a rather unusual angle from which to look. 
Ways of storing and transporting bicycles, in which the underside of the saddle 
could be seen, took place before or after normal use, but did not constitute part of 
it. 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-472/21 
 
6  
18 The referring court cannot endorse this view. It is not clear from the requirements 
of EU law whether the use intended by the manufacturer of the component part or 
complex product is to be taken into account, or the customary use of the complex 
product by the end user. 
19 According to the settled case-law of the Court of Justice, provisions of EU law 
must be interpreted and applied uniformly in the light of the versions existing in 
all the languages of the European Union. Where there is divergence between the 
various language versions, the provision in question must be interpreted by 
reference to the purpose and general scheme of the rules of which it forms part 
(see judgment of 8 October 2020, Combinova, C-476/19, EU:C:2020:802, 
paragraph 31). The English (‘normal use’), French (‘[une] utilisation normale’), 
Spanish (‘la utilizacion normal’), Italian (‘la normale utilizzazione’) and Dutch 
(‘normaal gebruik’) versions of Article 3(3)(a) and (4) of Directive 98/71 suggest 
that the word ‘bestimmungsgemäß’, used in the German version, must be 
interpreted as meaning ‘normal’ or ‘usual’. 
20 In addition, the definition of ‘normal use’ in Article 3(4) of Directive 98/71 may 
be interpreted to the effect that the legislature deemed, in principle, any use by the 
end user to be normal and thus only considered the exceptions mentioned in the 
provision to be in need of regulation. However, in the German text of the 
Directive, the clarifying word ‘jede’ (any) is missing, and the same is true of the 
other language versions mentioned above. Recital 12 and the scheme and 
legislative history of Directive 98/71 do not provide additional indications in that 
regard. 
21 As regards the argument that the customary use by the end user is relevant, it is 
pointed out that such an interpretation limits the scope of the regulation and could 
work in favour of protecting designs, in particular where all uses that are not 
completely atypical or obviously engineered are taken into account. 
22 If the use intended by the manufacturer is to be considered, it must be taken into 
account that the manufacturer of the component part and the manufacturer of the 
complex product are not necessary one and the same. Protection might also thus 
be excluded if the manufacturer of the complex product uses the component part 
for a purpose other than that intended by its manufacturer. That fact would 
militate in favour of the component part manufacturer’s intention being 
determinative, as they are generally the owner of the design themselves or 
produce the component part with the latter’s consent. 
23 Lastly, the question arises as to what criteria are used 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. That is what Question 2(b) 
seeks to clarify. 
24 The question that arises in this respect is whether the primary intended use of a 
complex product is determinative or whether and under what conditions, if any, 
MONZ HANDELSGESELLSCHAFT INTERNATIONAL 
 
7 
other intended uses might be taken into account. Next, the question arises as to 
whether ‘normal use’ is limited to actions which serve directly to achieve the or an 
intended use, or whether indirectly related actions are also included. 
25 Article 3(4) of Directive 98/71 also supports a broad interpretation of the concept 
of ‘normal use’. The legislature clearly took the view that maintenance, service 
and repair work are fundamentally part of normal use; otherwise, there would 
have been no need to provide for these exceptions. 
26 Additionally, a broad interpretation would minimise the impact of Article 3(3) of 
Directive 98/71, which is considered to be incompatible with the system. By 
contrast, a narrow interpretation would lead to even less favourable treatment for 
owners of designs for component parts of complex products, in comparison to 
owners of other designs. Academic writers therefore advocate taking into account 
all uses which are not completely atypical or obviously engineered.