Gap between EU design law and sustainability drive highlighted in saddle case

Frankfurt-based Fabian Klein of Pinsent Masons was commenting after the Court of Justice of the EU (CJEU) considered how EU design law should apply to the design of the underside of a bicycle saddle. Klein said the ruling helps to clarify when designs for component parts of complex products can benefit from registered design rights in the EU, but that the design law regime incentivises the creation of designs for stand-alone products more than it does for component parts.

Design rights protect the individual and characteristic appearance of a product or its parts by granting designers a monopoly right to the appearance of the whole or part of a product based on its features including the lines, contours, colours, shape, or texture.

There are limitations to when designs can benefit from registered design rights where they relate to a component part of a complex product, however. One such limitation is that components may only be protected if the part remains visible during ‘normal use’ of the product. What exactly such “normal use” means was a topic of the recent CJEU decision in the “Monz” case.

Klein said: “The CJEU’s decision in the Monz case revolved around whether the underside of a bicycle saddle remains visible during ‘normal use’, but its implications go beyond that.”

The CJEU said that the term ‘normal use’ is not restricted to use of the product in its principal function. It said the term covers “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 perspective 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”. Excluded by law, however, is use in the context of maintenance, servicing or repair.

The court also said that, when it comes to determining whether the component part is ‘visible’, it is relevant not only to assess this from the perspective of the end user but of an “external observer” too.

The ruling will now be considered by the Federal Court of Justice in Germany which had referred the matter to the CJEU for help in interpreting how EU design law should be applied in the Monz case. Klein said it is likely that Monz will lose its bid to have the design of the underside of its saddle protected by registered design rights in light of the CJEU’s ruling.

Klein said: “In this case, following the CJEU’s ruling, the Federal Court of Justice will have to consider whether the underside of a saddle is visible to the user of the bicycle or an external observer. This could be assessed from various perspectives including when the bike is ridden, or for example, when the rider is getting on or off, the bike is being stored away, when it is being cleaned, and – specifically to external observers – when the bike passes them by. However, it is unlikely that the court will find that the underside of the saddle remains visible in any of these situations. Therefore, protection likely will be rejected.”

Klein said the case highlights one of the inherent contradictions within design law – that stand-alone designs do not have to remain visible during normal use, but elements that are incorporated into a complex product do.

This, as the advocate general had also pointed out in his non-binding opinion for the CJEU in the Monz case, means that the design of a sole of a shoe can be protected by design rights while the underside of a saddle cannot, despite both rarely being visible when the relevant products – the shoe as a whole and the bike to which the saddle is attached – are in normal use. The sole of a shoe is not considered to be part of a complex product since it cannot be removed or exchanged.

“There are reasons for this differentiation between stand-alone designs and those for component parts of complex products – mostly to regulate the spare parts market – but it is not always a satisfying distinction and has often been criticised,” Klein said.

The European Commission has proposed a revised draft EU Design Directive and draft Regulation. However, Klein said: “The issue will not be solved by the upcoming design right reform, since the proposed amendments to the both the community design directive and regulation will leave this distinction in place.” He said the suggested plans for a new ‘repair clause’ for ‘must-match’ spare parts will not solve this problem either, since the clause would only apply to parts that are visible.

Klein added: “That manufacturers of complex products or parts face more difficulties in protecting their products via design rights compared to stand-alone products does not appear to align with the goal of incentivising companies to make their products more easily repairable as part of the move to a more circular and more sustainable economy. However, on the basis of the law as it stands and as it is planned, the CJEU’s decision does appear to be logical and at least provides a wider range of use cases that are considered to be ‘normal use’.”