{"id":1927,"date":"2018-02-05T19:58:09","date_gmt":"2018-02-05T18:58:09","guid":{"rendered":"https:\/\/www.bdl-ip.com\/\/?p=1927"},"modified":"2020-04-21T13:17:17","modified_gmt":"2020-04-21T11:17:17","slug":"2018-02-european-designs-the-cjeu-gives-its-interpretation-of-the-repair-clause","status":"publish","type":"post","link":"https:\/\/www.bdl-ip.com\/en\/2018-02-european-designs-the-cjeu-gives-its-interpretation-of-the-repair-clause\/","title":{"rendered":"2018\/02 > European designs: The CJEU gives its interpretation of the \u201crepair clause\u201d"},"content":{"rendered":"

The question of the protection of spare parts by designs rules has always been a controversial issue between countries of the European Union.<\/strong><\/span><\/p>\n

In EC Directive n\u00b098\/71 of 13 October 1998 on the legal protection of designs<\/span><\/strong>, 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.<\/span><\/strong><\/p>\n

Article 110 \u00a71 of Council Regulation (EC) n\u00b06\/2002 of 12 December 2001 on Community designs entitled \u201cTransitional provision\u201d 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<\/span><\/strong>. 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\u2019s consent.<\/p>\n

This provision is known as the \u201crepair clause\u201d<\/span><\/strong>.<\/p>\n

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 \u00a71 of the Council Regulation in respect of the manufacture and the commercialization of wheel rims<\/span> <\/strong>without Audi and Porsche\u2019s authorization, both being owners of European designs on those products. The defendant in the case, sued for infringement, asserted under article 110 \u00a71, that no protection regarding those designs could be opposed against him. Various preliminary rulings were requested.<\/p>\n

First, the Court defined the concept of \u00ab the component parts of a complex product \u00bb, then specified the conditions necessary to exclude protection under article 110 \u00a71 and, finally, imposed obligations on the manufacturer or seller of those parts.<\/p>\n

The notion of \u201cthe component parts of a complex product\u201d is not subordinated to a condition related to the appearance of this complex product.<\/strong><\/span><\/p>\n

The Court arrived at this conclusion having regard to past discussions regarding the \u201crepair clause\u201d and in view of the text of article 110 \u00a71.<\/p>\n

The request for a preliminary ruling sought to know, insofar as article 110 \u00a71 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.<\/span><\/strong><\/p>\n

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 \u00a71 because the wheel rim\u2019s shape can vary depending on types and options available on a same vehicle.<\/p>\n

The Court considered that article 110 \u00a71 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.<\/span><\/strong><\/p>\n

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<\/strong><\/span>, 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 \u00a71 to those same parts when they are protected by design.<\/p>\n

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.<\/p>\n

Conditions that exclude protection for parts of a complex product under article 110 \u00a71 of Council Regulation of 12 December 2001.<\/span><\/strong><\/p>\n

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:<\/strong><\/span><\/p>\n