Source: EURLEX
Language: en
Format: md

Case C‑472/21

Monz Handelsgesellschaft lnternational mbH & Co. KG

v

Büchel GmbH & Co. Fahrzeugtechnik KG

(Request for a preliminary ruling from the Bundesgerichtshof)

Judgment of the Court (Fifth Chamber), 16 February 2023

(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)

1. Approximation of laws – Designs – Directive 98/71 – Conditions for protection – Design constituting a component part of a complex product – Component part which is new and has individual character – Component part having to remain visible during normal use of the product – Visibility of the component part – Criteria for assessment

   (European Parliament and Council Directive 98/71, Art. 3(3))

   (see paragraphs 38-46)
2. Approximation of laws – Designs – Directive 98/71 – Conditions for protection – Design constituting a component part of a complex product – Component part which is new and has individual character – Component part having to remain visible during normal use of the product – Normal use of the product – Meaning

   (European Parliament and Council Directive 98/71, Art. 3(3) and (4))

   (see paragraphs 49, 52-55, operative part)

Résumé

Monz, a company incorporated under German law, is the holder of the design representing the underside of a bicycle or motorcycle saddle that has been registered since 2011 at the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office, Germany; ‘the DPMA’).

On 27 July 2016, Büchel, a company incorporated under German law, filed an application with the DPMA for a declaration of invalidity of that design, claiming that it did not meet the requirements for legal protection as a design. (
[1](#t-ECR_62021CJ0472_RES_EN_01-E0001)
)In its view, that design applied to a bicycle 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.

The DPMA rejected the application for a declaration of invalidity, holding that there were no grounds for excluding the design at issue from legal protection. It took the view that the component part to which the design is applied remains visible during normal use of the complex product, since such normal use covers also the disassembly and reassembly of the saddle for purposes other than maintenance, servicing or repair work.

Hearing an action brought against that decision, the Bundespatentgericht (Federal Patent Court, Germany) declared the design at issue invalid on the ground that it did not meet the requirements of novelty and individual character. According to that court, a component part which is visible only when it is separated from a complex product does not satisfy the condition of visibility and cannot therefore benefit from that legal protection. That court is of the view, moreover, that only the acts of riding a bicycle and getting on and off a bicycle can be considered to be normal use, and the underside of the saddle is not visible during such use.

It is against that background that the Bundesgerichtshof (Federal Court of Justice, Germany), hearing an appeal brought by Monz, asked the Court of Justice, in essence, first, whether the requirement of the visibility of designs applied to or incorporated in a product which constitutes a component part of a complex product must be assessed on the basis of certain conditions of use of the complex product or, rather, only on the objective possibility of recognising the design applied to the component part as integrated into the complex product. Second, it asked, in essence, what the relevant criteria are for determining the normal use of a complex product by the end user.

By its preliminary ruling, the Court clarifies, first, the requirement of visibility that must 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 and, second, the criteria characterising the concept of ‘normal use’ of that product, within the meaning of Article 3(3) and (4) of Directive 98/71.

Findings of the Court

In the first place, the Court focuses on the matter of the visibility of a component part once it has been incorporated into a complex product. At the outset, it recalls that Article 3(3) of Directive 98/71 lays down a special rule for designs applied to or incorporated in a product which constitutes a component part of a complex product. It points out, in that regard, that it is the appearance of the whole or part of a product which is the subject matter of the legal protection for designs.

As regards the requirements which must be met in order for the appearance of a component part of a complex product to be eligible for protection as a design, the Court refers to its earlier case-law according to which that component part must be visible and defined by features which constitute its particular appearance, which presupposes that the appearance of the component part cannot be completely lost in the overall product. The Court points out that that case-law, which was created in the context of the protection of designs provided for by Regulation No 6/2002, (
[2](#t-ECR_62021CJ0472_RES_EN_01-E0002)
)is also applicable to the design protection system under Directive 98/71.

However, 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. Thus, an assessment in abstracto of the visibility of the component part incorporated into a complex product, unconnected to any practical situation of use of that product, is not sufficient to allow a component part to benefit from legal protection. Nevertheless, Article 3(3) of Directive 98/71 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.

Therefore, the visibility of a component part incorporated into a complex product cannot be assessed solely from the perspective of the end user of that product, but must also be assessed from the perspective of an external observer.

In the second place, the Court examines the concept of ‘normal use’ of such a product by the end user, within the meaning of Article 3(4) of Directive 98/71. 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, the Court states that that provision covers the normal use of the complex product by the end user.

The Court specifies in that connection that 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. However, 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. Accordingly, the assessment of the normal use of a complex product cannot be based solely on the intention of the manufacturer of the component part or of the complex product.

Second, as regards 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, the Court takes the view that the fact that that provision does not specify what type of use of the 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, in view of the fact that, in practice, the 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, the Court concludes that the normal use of a complex product covers all those acts, with the exception of those which are expressly excluded, namely acts relating to maintenance, servicing and repair work.

Consequently, the concept of ‘normal 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 point of view 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 those considerations, the Court holds that the requirement of visibility of designs applied to or incorporated in a product which constitutes a component part of a complex product must be assessed in the light of a situation of normal use of the 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. 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.

---

(
[1](#c-ECR_62021CJ0472_RES_EN_01-E0001)
) For the purposes of 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), transposing 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](./../../../legal-content/EN/AUTO/?uri=OJ:L:1998:289:TOC))

(
[2](#c-ECR_62021CJ0472_RES_EN_01-E0002)
) Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs ([OJ 2002 L 3, p. 1](./../../../legal-content/EN/AUTO/?uri=OJ:L:2002:003:TOC)).

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