2018/02 > European designs: The CJEU gives its interpretation of the “repair clause”
The question of the protection of spare parts by designs rules has always been a controversial issue between countries of the European Union.
In EC Directive n°98/71 of 13 October 1998 on the legal protection of designs, due to the lack of agreement between Member States a status quo position was adopted and therefore article 14 of the Directive states that they can keep applying the rules of their national legislation and can only modify them in a direction that liberalizes the concerned market.
Article 110 §1 of Council Regulation (EC) n°6/2002 of 12 December 2001 on Community designs entitled “Transitional provision” excludes from protection as a Community design, component parts of a complex product that are used to repair this complex product in order to give it back its initial appearance. Therefore such Community design rights cannot be invoked against a third party to prohibit him from the commercialization of a product incorporating this design without the owner’s consent.
This provision is known as the “repair clause”.
On December 20, 2017, the Court of Justice of the European Union delivered an important judgment in two cases (Audi and Porsche joined cases C-397/16 and C-435/16) regarding the interpretation of article 110 §1 of the Council Regulation in respect of the manufacture and the commercialization of wheel rims without Audi and Porsche’s authorization, both being owners of European designs on those products. The defendant in the case, sued for infringement, asserted under article 110 §1, that no protection regarding those designs could be opposed against him. Various preliminary rulings were requested.
First, the Court defined the concept of « the component parts of a complex product », then specified the conditions necessary to exclude protection under article 110 §1 and, finally, imposed obligations on the manufacturer or seller of those parts.
The notion of “the component parts of a complex product” is not subordinated to a condition related to the appearance of this complex product.
The Court arrived at this conclusion having regard to past discussions regarding the “repair clause” and in view of the text of article 110 §1.
The request for a preliminary ruling sought to know, insofar as article 110 §1 concerns the component parts of a complex product intended to give it back its initial appearance, if it was necessary that the shape of those parts, protected by designs, should be dependent on (i.e. prescribed by) the appearance of the complex product appearance that they belong to.
If the answer to this question had been positive, then parts such as wheel rims would not be covered by the definition and would not be concerned by article 110 §1 because the wheel rim’s shape can vary depending on types and options available on a same vehicle.
The Court considered that article 110 §1 only requires the part to be a component part of a complex product used in order to repair this product to give it back its initial appearance. However, the Court recalled that the Council Regulation does not state that the complex product appearance must determine the shape of the component part of a complex product.
According to the Court, a different interpretation would limit the application of this article only to parts whose shape is imposed by the complex product to which they belongs and for which there is no choice, between various shapes, by the final user of the complex product. Thus regarding wheel rims, those parts have to be considered as component parts of a complex product and the fact that different types of wheel rims exist for a same vehicle is not a cause for excluding the potential application of article 110 §1 to those same parts when they are protected by design.
Although this definition of component parts of a complex product can seem broad, the conditions for excluding the protection by Community design right were defined tightly by the CJEU.
Conditions that exclude protection for parts of a complex product under article 110 §1 of Council Regulation of 12 December 2001.
According to the Court, in order for European design protection not to be capable of being invoked against those parts, the following conditions have to be met:
- To be visible during a normal utilization of the product in which they inserted. The wheel rims meet this criterion. In any event, parts which are invisible during a normal utilization of the product in which they inserted cannot be protected as designs.
- To be parts of a complex product, which is different components, conceived to be assembled in one industrial article or artisanal assemblage, parts which can be replaced in order to allow the disassembly and the reassembly of the product and without which the complex product would not be able to be used normally.
- The utilization of the part of a complex product covers the manufacture, the offer, the placing on the market, the importation, the exportation or the use of a product in which the design is integrated or to which it is applied, or the storage of the product for the same purpose. This concept is largely understood and incorporates all direct or indirect utilization in order to repair the complex product.
- To be a repair of a complex product that has become defective, and not a change motivated for “pleasure or simple convenience”.
The Court concludes that article 110 §1, the so-called “repair clause” applies only for parts of a complex product which are visually identical to the original parts. Therefore, it excludes from the benefit of the “repair clause”, all spare parts which differ, in terms of the lines, the contours, the colors, the textures or the dimensions, from the original piece. If this condition of identity is not met, the exclusive right of the design’s owner will be infringed. It will be observed that this interpretation can apply in the “tuning” field.
Finally, the Court endorses the suggestion of the Advocate General to impose on the manufacturers or on the sellers of parts of a complex product a duty of diligence in regard to the intentions of the final users, when seeking to make use of the “repair” clause in order to escape the protection which may exist on those parts under designs. They have to inform customers by a clear and visible indication on all documents and packaging attached to those parts that they are not the owner of the designs and that the parts can only be used for repairing a complex product in order to give it back its original appearance. The Court specifies that they have to monitor by all appropriate means and notably by contracts, that the users do not want to use those parts in a manner that is incompatible with article 110 §1 of the Council Regulation.
So, the Court of Justice of the European Union appears to agree with the European Parliament legislative resolution of 12 December 2007 on the proposal for a directive of the European Parliament and of the Council amending the Directive of 1998 on the legal protection of designs (COM(2004)0582 – C6-0119/2004 – 2004/0203(COD), notably in that this proposal provides for informing the public on the origin of spare part. The proposal did not go through but after the CJEU decision it may be repeated.