62021TJ0617_RES
Case T‑617/21
B&Bartoni spol. s r.o.
v
European Union Intellectual Property Office (EUIPO)
Judgment of the General Court (Third Chamber, Extended Composition), 22 March 2023
(Community design – Invalidity proceedings – Registered Community design representing an electrode to insert into a torch – Ground for invalidity – Article 4(2) of Regulation (EC) No 6/2002 – Component part of a complex product)
Community designs – Conditions for protection – Design constituting a component part of a complex product – Concept – Criteria for assessment – Consumable nature of the component part – Disassembly and re-assembly of the complex product when the component part is replaced – Completeness of the complex product – Interchangeability of the component part
(Council Regulation No 6/2002, Art. 4(2))
(see paragraphs 26, 35, 36, 45-47, 55, 56, 69)
Community designs – Decisions of EUIPO – Legality – Examination by the EU judicature – Criteria
(Council Regulation No 6/2002)
(see paragraph 38)
Community designs – Grounds for invalidity – Design constituting a component part of a complex product – Representation of an electrode to insert into a torch
(Council Regulation No 6/2002, Arts 4(2) and 25(1))
(see paragraphs 39, 49, 62, 70, 78)
Résumé
Hypertherm, Inc. is the holder of a Community design representing an electrode to insert into a torch forming part of a plasma cutting system. The company B&Bartoni spol. s r.o filed an application for a declaration of invalidity against that Community design with the European Union Intellectual Property Office (EUIPO) on the ground that it did not meet the requirements for protection of Community designs, since the electrode was not visible during normal use of the torch. (
1
) That application was first of all upheld by the Invalidity Division but was subsequently dismissed by the Board of Appeal, which took the view that the product represented in the contested Community design, namely the electrode at issue, could not be regarded as a component part of a complex product.
Sitting as a chamber in extended composition, the General Court interprets the concept of ‘component part of a complex product’ as set out in Article 4(2) of Regulation No 6/2002. This is the first time that the Court rules on the question whether a consumable, such as the electrode in the present case, can constitute a component part of a complex product.
Findings of the Court
At the outset, the Court states that the question whether a product comes within the concept of ‘component part of a complex product’ must be assessed on a case-by-case basis, according to a set of relevant factors. Therefore, in order to assess whether the electrode at issue constitutes a component part of a complex product, the Court examines the relevance of four factors taken into account by the Board of Appeal in the contested decision.
In the first place, the Court takes the view that the consumable nature of the electrode is a relevant factor in assessing whether the electrode constitutes a component part of a complex product. More specifically, since the concept of ‘component part of a complex product’ has not been defined in Regulation No 6/2002, the standard characteristics of a consumable, such as the absence of a firm and durable connection with the complex product and the regular purchase and replacement of the electrode on account of its short lifespan are relevant factors for identifying what constitutes a component part of a complex product. In that regard, the Court observes that the component parts of a complex product are components intended to be assembled into a complex industrial or handicraft item, which can be replaced permitting disassembly and re-assembly of such an item. The electrode at issue, as a consumable item for a torch, is intended to be easily attached to the torch, consumed and used quickly, and easily replaced by the end user without that operation requiring disassembly and re-assembly of that torch. In addition, the end user, who regularly purchases and replaces electrodes, is able to perceive and assess its characteristics, irrespective of its visibility once inserted into the torch.
In the second place, the Court takes the view that the question whether the replacement of a product requires disassembly and re-assembly of a complex product is also a relevant factor to be taken into consideration in determining whether such a product constitutes a component part of that complex product. The Board of Appeal’s taking into account of ‘disassembly’ and ‘re-assembly’ is based on Regulation No 6/2002 (
2
) and on the case-law of the Court of Justice. (
3
) Thus, a product which, when being replaced, does not require the disassembly and re‑assembly of the product in which it is incorporated and which is specifically intended to be replaced regularly and in a straightforward manner by end users is less likely to constitute a component part of a complex product than a product which is normally replaced by professionals with specific expertise to carry out that replacement. In the present case, the replacement of the electrode remains a simple operation for the end user which cannot be regarded as ‘disassembly’ and ‘re-assembly’ of the torch within the meaning of Regulation No 6/2002.
In the third place, the Court finds, first, that the completeness of the complex product, without the electrode at issue, is a relevant factor for the purpose of assessing the concept of ‘component part of a complex product’. In that regard, the Court makes clear that, when purchasing a torch without an electrode or when the electrode is removed from the torch, the end user will not perceive that torch as being broken or incomplete. By contrast, without its component parts, a complex product will not, in principle, be perceived by the end user as a complete product capable of being subject to normal use or as a product in good condition. Furthermore, although the torch and the plasma cutting system cannot fulfil their function, namely to cut or gouge metal, without an electrode fitted in the torch, this does not mean that the electrode must be regarded as a component part of a complex product. Indeed, to claim that, in the case where a product cannot fulfil the function for which it is intended without another product, that other product must be regarded in all cases as a component part of the first product would mean that a large number of separate products, in particular of a consumable nature, without which complex products cannot fulfil the function for which they are intended, would wrongly be regarded as component parts of those complex products.
Secondly, the fact that the torch can be offered on the market without the electrode and that the electrode is commonly advertised and sold separately is also a relevant factor in order to determine whether the electrode at issue constitutes a component part of a complex product. It is true that each producer remains free to market the complex product with its component parts or to sell them separately and such a commercial decision is not a decisive factor in assessing whether a product constitutes a component part of a complex product. However, it is unusual for the purchase of a complex product not to include its actual component parts. In the present case, the complex product at issue, namely the torch, is sold either with or without the electrodes at issue.
In the fourth and last place, the Court takes the view that the interchangeability of the electrode is a factor to be taken into account in that analysis. A product which cannot be replaced by another non-identical product or be used in different complex products is, in principle, more likely to be linked in a durable and tailored manner to that complex product, and thus to constitute a component part of that complex product. Consequently, the fact that the electrode at issue can be replaced by a different electrode and that torches of different types can use the electrode at issue is a factor to be taken into account in determining that that electrode does not constitute a component of a complex product.
In the light of the foregoing, the Court holds that the factors relied on by the Board of Appeal are relevant and concludes that it did not err in finding that the electrode at issue constitutes a separate product and not a component part of a complex product.
(
1
)	Under Article 4 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), a design applied to or incorporated in a product which constitutes a component part of a complex product is only to be considered to be new and to have individual character if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter.
(
2
)	Article 3(c) of Regulation No 6/2002.
(
3
)	Judgment of 20 December 2017, Acacia and D’Amato (C‑397/16 and C‑435/16, EU:C:2017:992, paragraph 65).