Are “supposed use” and “regular use” the identical in EU design legislation? Courtroom of Justice to interpret in case C-472/21


The Courtroom of Justice of the European Union (CJEU) will quickly situation its first ruling regarding the idea of “regular use” in EU design legislation (case C-472/21). Whereas the notion is itself difficult, the case additionally has a linguistic twist – the time period has completely different translations in several variations of Directive 98/71.

Request for a preliminary ruling in C-472/21 originates from a German invalidity case. In 2011, Monz Handelsgesellschaft Worldwide (design proprietor) registered a nationwide design for “saddles for bicycles or motorbikes” on the German Patent and Trademark Workplace (DPMA). The design, to the correct, is utilized to the underside of a saddle. In 2016, Büchel GmbH & Co. (invalidity applicant), filed an utility for invalidity on the DPMA. It claimed that the design was invalid underneath the provisions of German Design legislation that implement Artwork. 3(3) and (4) of Directive 98/71.

In response to Artwork. 3(3) and (4) of Directive 98/71, a design, which constitutes a element half (e.g., a saddle of a bicycle) of a fancy product (e.g., a bicycle), should stay seen in the course of the regular use of the advanced product as soon as the element half has been included into it. If not seen throughout regular use, such element half isn’t eligible for design safety, as it’s deemed neither new nor having particular person character. The evaluation is completed from the attitude of the top person, and excludes upkeep, servicing or restore work.

Although Artwork. 3(3) and (4) of Directive 98/71 don’t expressly confer with motor automobiles, their drafting historical past exhibits how these necessities had been launched to control the aftermarket for spare elements. Fearing that design safety for engines or radiators (often positioned inside a automobile) would create monopolies available in the market for spare elements, the lawmakers drafted this provision, which was criticised by students for its overbroad scope.

The DPMA rejected the appliance for invalidity. It opined that “regular use” of a bicycle contains not solely using it, but in addition getting on and off, parking the bicycle, in addition to dismantling the saddle and taking it with the rider when parked exterior, so it won’t be stolen. Within the opinion of the DPMA, the underside of the saddle can be seen to the top person throughout regular use, and thus the design is legitimate.

The invalidity applicant appealed to the Federal Patent Courtroom, which discovered that the design is invalid (30 W (pat) 809/18). In response to the court docket, the “regular use” of the bicycle is utilizing it as a way of transportation. As such, “regular use” solely contains using the bicycle in addition to getting on and off it. Parking a bicycle or storing the saddle at house are actions that precede regular use, however they don’t seem to be in themselves regular use.

Furthermore, Directive 98/71 requires visibility as soon as the element half has been included into the advanced product: this is able to exclude eradicating the saddle to forestall theft. The underside of the saddle is in a roundabout way seen, thus the design is invalid.

Nonetheless, the Federal Patent Courtroom acknowledged that the idea of “regular use” poses a query of legislation. The primary situation with understanding “regular use”, defined the court docket, is that the German model of Directive 98/71 refers to it as “bestimmungsgemäße Verwendung”, which stands for “supposed” moderately than “regular use”. In response to the court docket, the time period utilized in English (“regular use”) or French (“utilization normale”) variations connotes a broader scope, which means that the conventional use can be construed extra expansively. It might additionally consider how the advanced product is utilized in follow.

In German, nevertheless, the which means connotes “supposed use”, which is extra restricted. The essential issue is the aim for which the product is meant moderately than how it’s really used. Thus, whereas parking or storing are a part of the which means of the time period “regular use” in English, they don’t seem to be lined by the German “supposed use”.

The design proprietor appealed to the Federal Courtroom of Justice. Conscious of the problems with interpretation, the court docket determined to remain the proceedings and ask the CJEU, whether or not: 1) the element product shall be seen solely throughout regular use or it may be seen in abstracto; and a couple of) whether or not “regular use” solely contains utilizing the product with respect to its principal perform (i.e., as “supposed by the producer”, which hints on the German model of the Directive), or it additionally refers to different circumstances which will come up in the middle of use of the product by the top person.

Advocate Normal (AG) Szpunar lately delivered his Opinion on the matter. Answering the primary query, AG confirmed that the element product have to be seen throughout regular use, moderately than additionally being seen within the summary.

Nonetheless, the essential factor is deciphering what “regular use” is, which is the main target of the second query. Right here, AG skirted the problem of linguistic variations between completely different variations of the Directive. Harmonization is to be achieved by way of a uniform interpretation of the time period. A too slender interpretation of “regular use”, reasoned AG, would unduly restrict the safety of designs for element merchandise. Furthermore, the requirement of visibility throughout regular use doesn’t exist for “non-complex” merchandise, equivalent to footwear or clothes. Thus, lining of a jacket could also be protected with out further necessities, not like the underside of a saddle.

AG additional opined that “regular use” shouldn’t be assimilated into the principal perform of the product for which it’s supposed (as was achieved by the German court docket). “Regular use” could nicely embody washing the product or eliminating minor points, equivalent to paper caught within the printer. Thus, solutions AG to the second query, “regular use refers to all conditions, which can moderately come up throughout use of a fancy product by the top person”.

If CJEU now follows the reasoning of AG, the “regular use” will cowl all kinds of conditions. Because of this the exception underneath Artwork. 3(3) and (4) of Directive 98/71 will doubtless be utilized solely in a restricted variety of circumstances. This end result can be in conformance with each the rationale of EU design legislation, in addition to Artwork. 26(2) of the TRIPS Settlement, which permit solely restricted exceptions in design safety.



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