EU design rights: What is a ‘normal use’ of a product?
As the Advocate General issues its opinion in a case concerning design registration of a bike saddle, Volha Parfenchyk discusses what is meant by ‘normal use’ in the context of EU design rights.
Assessing what constitutes ‘normal use’ of an object – such as a bicycle – can be more difficult than it may first appear. Clearly, using a bike according to its intended purpose, namely riding, constitutes its ‘normal’ use. However, how about activities such as cleaning, dismantling or repair? While such activities may not, strictly speaking, have been intended by the designer of the object, they can nevertheless be reasonably expected by the object’s user, and this can have a great impact on the scope of protection for EU design rights under EU law.
EU design rights: What lies beneath a bike saddle?
This question about ‘normal use’ of an object under EU design law emerged in a recent case concerning the registrability of a design for the underside of a bike saddle.
In 2011, a design of the underside of a bike saddle was registered by Monz Handelsgesellschaft International mbH & Co. KG. That design was challenged five years later, in 2016, by Büchel GmbH & Co. Fahrzeugtechnik KG, which filed a declaration of invalidity. Its main argument was that the underside of a bike saddle was not visible during ‘normal use’ of the bike. According to the existing EU design law, this condition (of visibility) had to be met to successfully register the design of a component (the saddle) of a complex object (the bike).
The German Patent and Trademark Office (DPMA) rejected the request on the basis that ‘normal use’ of a bike included not only such activities as riding a bike (including mounting and dismounting), but also “dismantling or reassembling the saddle for purposes other than maintenance, servicing or repair work”. As the bike saddle would be visible to the bike’s user during these activities, the design on the underside of the saddle was held to be legitimate by the DPMA therefore.
Büchel successfully appealed the decision at the German patent court (Bundespatentgericht), arguing that the registered design was invalid because only riding (and mounting and dismounting) a bicycle should be considered to fall within the scope of a bike’s ‘normal use’. As the underside of the saddle would be invisible to the bike’s user (or to a third person) during such activities, the design right would be invalid therefore
Monz then appealed the decision before the German Federal Court of Justice (Bundesgerichtshof), which referred the case to the CJEU for a preliminary ruling.
EU design rights: The question of visibility
Articles 3(3) and 3(4) of the EU Directive 98/71 on the legal protection of designs stipulate that a design of a component part of a complex product must be visible during normal use of the product to be eligible for protection under EU design law. The Directive does not define what such ‘normal use’ actually is, but it explicitly excludes activities such as maintenance, servicing or repair work from its scope.
The problem that emerged in this case was that the German version of the Directive uses the term ‘intended use’ instead of the literal translation of the English term ‘normal use’. Clearly, ‘intended use’ suggests a much narrower scope of use because it implies the use of the object according to its purpose. In the case of a bike, the intended purpose would be riding the bike and mounting/dismounting it.
When referring the case to the CJEU for preliminary ruling, the Bundesgerichtshof first asked whether a component of an object can be considered visible if certain conditions are met as a result of how the object is used or when it can be objectively seen by an observer. Second, it asked that, if certain conditions do have to be met, what these conditions are. In addition, and related to this point, it asked whether ‘normal use’ of this object means the use intended by the manufacturer or the customary use by the end user.
Opinion of the Advocate General
In the AG Opinion on 8 September 2022, CJEU Advocate General Szpunar decided as follows.
With respect to the first question, the component product must be visible in the situation of ‘normal use’ of the product and not simply visible objectively.
Secondly (and more importantly in this case), the AG stated that it would be wrong to associate normal use of a product only with its principal function. In practice, the use of a product in its principal function cannot be performed without other additional activities, such as – in this case – storage, transportation, or loading and unloading of baggage on and off the bike. While the Directive contains limitations to what can be considered ‘normal use’ of a product (including maintenance, servicing or repair work), the AG stated that this exception should not be given too broad an interpretation. For example, some activities that can be seen as maintenance are intrinsically related to the use of the product in its principal function, for example, cleaning and washing, as they are essential to the use of certain products. As a result, ‘normal use’ of a product should be defined as including all situations which may reasonably arise during use of a complex product by the end user.
EU design rights: Implications for designers
According to the AG, ‘normal use’ of a product (in this case a bike) includes a broader scope of situations and activities, therefore, than those that are strictly speaking intended by the object’s producer or designer. This also means that the exceptions stipulated in the Directive (i.e. maintenance, servicing or repair work of a product) should be interpreted more narrowly.
If the CJEU follows the reasoning of the AG in its future ruling, this broad interpretation will become part of the EU design law and will have a great impact on the scope of rights of designers. In other words, a broader scope of components of complex products will become eligible for design registration, protection and enforcement against reproduction and use by third parties.
Update: The EU has now confirmed the reasoning of the AG in its follow-up ruling.
To find out more about EU design rights, speak to your Novagraaf attorney or contact us below.
Volha Parfenchyk works in Novagraaf’s Knowledge Management department. She is based in Amsterdam.