14 Nov
2019

Designs and the impact of visibility: what you see is what you get

Laurent & Charras

Design protection is denied to the purely functional features of a product. Nevertheless, this does not mean that a design must be aesthetic to be protected – Recital 10 of the Community Design Regulation (6/2000) clearly states that it is not necessary “that a design must have an aesthetic quality”.

‘Aesthetic quality’ is considered too subjective a notion, so the more objective concept of ‘appearance’ is used instead – a design is “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation”.

A design does not protect a shape, but rather protects the appearance of the product (which is a larger concept). However, it is also clear that the notion of ‘appearance’ refers to what appears to the eye, that which is visible and can be seen. Hence, the regulation requires visibility as a criterion of protection for parts of complex products, but there is no set requirement for products as such, even though case law seems to have extended it as a general requirement.

General requirement of visibility

As a general principle, the General Court has laid out that only the visible part of any product is protected by the regulation, stating “that regulation confers protection only on the visible parts of the products or parts of products, which may as a result be registered as designs” (General Court, T-494/12, 9 September 2014). In another case, the General Court stated that “it must be emphasized that visibility is an essential criterion for the protection of Community designs” (General Court, T-39/13, 3 October 2014).

This reasoning aligns with Recital 12 of the regulation, which states that “protection should not be extended to those component parts which are not visible during normal use of a product, nor to those features of such part which are not visible when the part is mounted”. For instance, if the differences between the designs are in a less visible part of the product, they will not influence the overall impression (General Court, T-334/14, 29 October 2015). In the same way, the rear part of a conference unit does not have a major impact on the user’s perception, as it is out of the field of view (General Court, T-153/08, 22 June 2010).

Clearly, this requirement does not affect the validity of the design, only its scope of protection by influencing its overall impression. However, on the other hand, the regulation lays down specific rules regarding the visibility of part of a complex product that does affect the design’s validity.

Parts of a complex product

A product is any industrial or handicraft item and a complex product is composed of multiple components which can be replaced by disassembly and re-assembly. These operations must not affect the integrity of the product. As a result, building materials are not considered to be part of a complex product, as removing them implies partial destruction (EUIPO, R2300/2012-3, 16 June 2014; and General Court, T-494/12, 9 September 2014).

A product part must not be confused with a product accessory. The difference lies in the fact that a part has no use independently from the complex product as a whole, its only use is incorporated into the complex product (General Court, T-39/13, 3 October 2014). The same reasoning applies to consumables such as ink cartridges or computer parts (EUIPO, Third Chamber R 2337/2012-3, 9 April 2014).

Parts must be visible

Article 4(2) of the Community Design Regulation states that to be protected, the part of a complex product must remain visible in normal use and the visible features must fulfil, in themselves, the requirements of novelty and individual character.

It is useful to distinguish between the complex product, to which Article 4(2) does not apply, and the component part, to which Article 4(2) does apply. The condition of visibility during normal use is not a condition of the validity of the complex product as a whole, only of the component part (EUIPO, Cancellation Division, ICD 4919, 23 June 2008).

Visibility of the component part must be appreciated in concreto, considering how the complex product is actually used. This means that the component part does not need to be always visible, “it is sufficient if the whole of the component can be seen some of the time in such a way that all its essential features can be apprehended” (EUIPO, Third Chamber, R 690/2007-3, 22 October 2009).

By analogy, the novelty and individual character of a design cannot be appreciated by comparison with a prior design, whether registered or not, if said design is a part of a complex product and is not visible during normal use (General Court, T-39/13, 3 October 2014).

During normal use

Article 4(3) of the regulation defines ‘normal use’ as “use by the end user, excluding maintenance, servicing or repair work”. To date, neither the General Court nor the European Court of Justice (ECJ) have offered an interpretation of these concepts and decisions regarding cancellation actions before the Invalidity Division must be relied on.

Visibility is an objective factor, while the concept of ‘normal use’ is subjective as a product can be used by several persons each having a different perception of its normal use. For example, in respect of a car, would normal use encompass driving as well as looking under the car bonnet and seeing the engine without any intention of servicing or repairing the engine? In the case of a standard car, the answer would be no. But what about for a Ferrari whose owner actually wants to admire the engine layout under the bonnet?

Normal use of a complex product, not part

A recent Invalidity Division decision concerned a valve inserted into refrigeration apparatuses (eg, fridges or air conditioning units) and dealt with the normal use of a product rather than one of its parts (EUIPO, Invalidity Division, ICD 10 516, 8 August 2018): “This valve, being an element of refrigeration or air conditioning systems that cool the air or otherwise regulate it in domestic and commercial premises, is inserted, for example, in air conditioners and refrigerators. Therefore, the normal use of the valve coincides with that of the end product encompassing it, such as a refrigerator or an air conditioning device.”

The decision stated that normal use of part of a complex product coincides with the normal use of the said product. In other words, the normal use of an engine cover corresponds to the normal use of the car into which it is fitted. And the normal use of a car is for it to be driven, an operation during which the engine is not visible.

Therefore, in the same way that there is only one end user, there is only one normal use – meaning that normal use of the part and use of the product itself must not be distinguished. This disqualifies the idea according to which sales of internal spare parts of a complex product could be a form of normal use or the idea that the use of the part in a mechanics’ workshop or factory is also deemed normal use.

The perspective of the end or final user of the complex product is what must be considered, not the perspective of intermediaries involved between the manufacturer and end user.

End user

This decision also indicates that the end user “is a person who buys these items, not a professional who is in charge of their installation, maintenance or repair”.

In the case of a car, this further disqualifies the idea that use in the context of repairs, servicing or maintenance could be deemed normal use should it be considered from the perspective of the professional.

In Bell & Ross (T-80/10, 25 April 2013) the General Court stated at Point 102 that “the quality of user implies that the person concerned uses the product into which the design is incorporated in conformity with the finality for which this same product is intended”. In this case, the court was defining the informed user, which is clearly not the normal use indicated in Article 4.2, but there appears to be no reason why there should be two definitions of the use of the same product, one for each user referred to in the regulation.

It is also important that this decision comes from the General Court and not the EUIPO Cancellation Division, as a higher degree of interpretation and caution may be expected. This definition may be applied to an end user, namely that such use conforms with the intended finality of the product. In the case of a car, it clearly is driving.

Exclusion of maintenance, servicing or repair work

One of the aims of Article 4(2) is to limit the protection afforded to spare parts, which are, by definition, parts of a complex product. During maintenance, service or repair work, the part is necessarily visible, so this exclusion is required to protect the ratio legis of Article 4(2).

The EUIPO takes a restrictive approach to this exclusion and has even considered that an ‘inspection’ (implying no dismantling of the product) is not considered normal use (EUIPO, Invalidity Division, ICD 4380, 10 March 2008).

These exclusions seem to imply the intervention of a professional, so what if they are made by a non-professional (eg, refuelling a car)? Once again, the EUIPO stated that this simple day-to-day operation is not deemed normal use: “The filling of the fuel tank is not part of the normal use since it is a servicing work and hence deemed not to be considered as a normal use according to Article 4(3)” (EUIPO, Invalidity Division, ICD 3457, 26 January 2012).

In the same way, the assembly of various parts into a complex product is not considered normal use (EUIPO, Third Chamber, R2337/2012-3, 9 April 2014).

Scope of normal use

The definitions of ‘end user’ and ‘normal use’ do not solve the problem regarding the scope of the normal use.

Is the normal use of a car (ie, the complex product) limited simply to driving or does it encompass other aspects such as looking under the bonnet and admiring the engine or other parts of the complex product? There is no direct answer to be found in case law, but some decisions tend to point to a negative answer.

First, in Bell & Ross (General Court, T-80/10, 25 April 2013) the court considers the final use for which products are intended, which seems to exclude subjective motives inherent to the end user. Second, the court also evaluates visibility, taking into account the actual use of the complex product and not hypothetical uses in which the component part would be visible (General Court, T-39/13, 3 October 2014).

In the car example, it could be imagined that a car enthusiast might replace the car bonnet with a transparent plexiglass-cover rendering the engine layout visible (such a feature actually exists on some sports cars). This would be a hypothetical use that is not typically taken into account.

Another EUIPO Cancellation Division decision implies the same conclusion. It concerns a device to protect trucks from having their fuel thanks syphoned: “The normal use of a vehicle fuel tank is to hold the fuel for operating the vehicle. A fuel tank is always closed by a cap in the normal use” (EUIPO, Invalidity Division, ICD 3457, 26 January 2012). This means that the truck or car must be considered to be ‘in use’, in the sense of functioning or driving. In the same way, it can be logically assumed that a car bonnet is closed during normal use and that such a use does not encompass looking under the bonnet.

The only counter-argument would be to consider that certain end users like to look under their car bonnet for aesthetical reasons, hence the efforts made by car manufacturers to enhance this element of the car. The owner of a Ferrari is more likely to look at his or her V12 engine than perhaps the owner of a standard car. However, this is a subjective argument linked to the personality and tastes of a particular end user and it could be suggested that most end users never open their car’s bonnet except when required to do so for servicing.

A further argument is that cars with elaborate engine covers are usually high-end premium vehicles, and taking into account the subjective motives of their owners would, de facto, introduce a differentiation within the general category of vehicles. In Bell & Ross the General Court refused to consider the price of the object when defining the end user, which is another argument against accepting concurrent different uses of the same product.

Comment

Case law is evolving in design matters and it is only a matter of time before there is a decision from the ECJ regarding ‘normal use’ and ‘end user’.

The notion of visibility, whether through Article 4 or in light of case law establishing a general principle of visibility, will directly influence design filing strategy. If the design is incorporated into a spare part, a contextual appreciation must be made placing the part in its actual use to see if the design is valid.

In general, the notion of visibility and its influence on the scope of protection of the design must be kept in mind when preparing the views for filing. Applicants are allowed seven views before the EUIPO and the opportunity for filing the bottom view of an object which is intended to be placed on a table (eg, a laptop) could be questioned, as the features disclosed by this view will have very little influence on the overall appearance of the product.

Again, this is an invitation to systematically adapt the views of the product and its main features and not simply to use the seven traditional views simply as default.

Laurent & Charras

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Dardilly 69570

France

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Julien Scicluna

Partner

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Julien Scicluna is a partner in Laurent & Charras and heads the firm’s trademark and design department. He holds an LLM from the Centre for International IP Studies in Strasbourg and is an alumnus of the London School of Economics. A French and European trademark and design attorney, he advises clients ranging from local small and medium-sized enterprises to major Asian corporations. He travels extensively in Asia and regularly lectures on intellectual property. He also teaches at various universities and business schools in France, particularly in relation to corporate IP strategy. He is a member of the European Communities Trademark Association, the International Association for the Protection of Intellectual Property and the International Trademark Association.