The matter at hand

Monz is the holder of a German design for the products ‘saddles for bicycles or motorcycles’, registered with a single representation showing the underside of a saddle. Büchel filed an application with the German Patent and Trade Mark Office for a declaration of invalidity of the design.

In its application for invalidity, Büchel relied on the German equivalent of Article 3(3) and (4) of Design DirectiveDirective 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs, which stipulates the requirement of ‘visibility during normal use’, that is to be met in order for a design which constitutes a component part of a complex product to be eligible to benefit from the legal protection of designs. Büchel argued that the design at hand is a component part of a complex product like a bicycle or motorcycle, which part is not visible during normal use of that product.

In supreme appeal in this invalidity action, the referring court, the Bundesgerichtshof (Federal Court of Justice of Germany), asks, in essence, whether the requirement of ‘visibility during normal use’ must be assessed on the basis of certain conditions of use of that complex product or only the objective possibility of recognizing the design applied to the component part as integrated in the complex product. Second, the referring court inquired what the relevant criteria are for determining the ‘normal use’ of a complex product by the end user. 

The judgment of the ECJ

Upon addressing these topics, the ECJ first establishes that the saddle of a bicycle or motorcycle constitutes a component part of a complex product (paragraph 34).

The ECJ then addresses the rationale behind the requirement of visibility. With reference to case C-405/15 P (ESS v Group Nivelles), it stipulates that “appearance is the decisive element of a design and that a characteristic of a design is visible constitutes an essential feature of that protection” (paragraph 38). It consequently draws the conclusion that “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” (paragraph 41).

The ECJ then assesses what is to be considered as ‘normal use’ in the sense of the present requirement, and more specifically whether the normal use of the component part is to be assessed or the normal use of the complex product, and whether the intended use by the manufacturer is to be assessed or the normal use by the end user (paragraphs 44 et seq.). In this regard, it is considered that, despite language versions of the directive that may create another impression (paragraph 50), regard must be had to “the ‘normal use’ of the complex product by the end user” (paragraph 49).

Upon applying this test, a broad interpretation should be given as to what is considered to be normal use by the end user (paragraph 53), including “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” (paragraph 54). This broad interpretation does however not extend to acts “expressly excluded by Article 3(4) Design DirectiveDirective 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs 98/71, namely acts relating to maintenance, servicing and repair work” (paragraph 54).