Spare PartsWhere now?

António AndradeChair, ECTA’s Design CommitteeVieira de Almeida & Associados

Krystian Maciaszek Trademark and Patent Attorney Kulikowska & Kulikowski

Christian Guellerin Executive Director, L’Ecole de design Nantes Atlantique Head of Cumulus Network

Chair: Trevor Little Editor, WTR Magazine

Spare partsWhere (are we) now?

Dr Krystian MaciaszekKulikowska & Kulikowski – Warsaw

based onBayerische Motoren Werke AG v Round and Metal Ltd. (HC11C02291)

Article 14 DIRECTIVE 98/71/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL (freeze plus)

“Until such time as amendments to this Directive are adopted on a proposal from the Commission in accordance with the provisions of Article 18, Member States shall maintain in force their existing legal

provisions relating to the use of the design of a component part used for the purpose of the repair of a complex product so as to restore its original

appearance and shall introduce changes to those provisions only if the purpose is to liberalise the market for such parts.”

Article 3 COUNCIL REGULATION (EC) No 6/2002

(a) "design" means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation;

(b) "product" means any industrial or handicraft item, including, inter

alia, parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs; and

(c) "complex product" means a product which is composed of

multiple components which can be replaced permitting

disassembly and re-assembly of the product.”

Article 110 COUNCIL REGULATION (EC) No 6/2002

1. Until such time as amendments to this Regulation enter into force on a proposal from the Commission on this subject, protection as a Community design shall not exist for a design which constitutes a component part of a complex product used

within the meaning of Article 19(1) for the purpose of the

repair of that complex product so as to restore its original

appearance.

2. The proposal from the Commission referred to in paragraph 1 shall be submitted together with, and take into consideration, any changes which the Commission shall propose on the same subject pursuant to Article 18 of Directive 98/71/EC.

Facts of the case – BMW designs R & M had imported into the UK and sold replica alloy wheels which are of essentially the same appearance as each of the below Community Registered Designs

000032438-0004

000304274-0004 000936281-0005

000609458-0006

Question marks in the case

I. Does an exception “spare part” nullify the right or does it only exclude unlawfulness of action? Consequently, whose is the burden of proof?

II. What is the relationship between the appearance of complex products and a spare part? In other words, to what extent should the appearance of a spare part be dependent upon the appearance of a complex product?

III. How should the term “purpose” be understood - for the purpose of the repair of that complex product? In other words, does the exception refer to a mechanic’s actions only or those of other parties (e.g. importers) as well?

III. How should the term “original” be understood - so as to restore its original appearance? In other words, does it include only parts fitted by the factory?

I. Effects of art. 110.1 reg. No 6/2002 on the right of registration

For the exclusion from the protection of spare parts (the defendant) i.a.:

- wording of Article 110(1) itself, and in particular the words "protection for a Community design shall not exist",

- wording of recital 13, and in particular the words "not to confer any protection as a Community design",

- contrast between the wording of Article 110(1) and that of Article 20.- legislative history.

For the exclusion of unlawfulness of action (BMW) i.a.:

- wording of Article 110(1) and recital 13, in particular the words "used … for the purpose of the repair of that complex product so as to restore its original appearance" did not prevent registration of the design, but only its enforcement in certain circumstances,

- legislative history.

I. Effects of art. 110.1 reg. No 6/2002 on the right from registration

A standpoint established in the course of negotitations conducted by Presidency dated 24 November 2000 (13749/00):

“(…) registration of a spare part as a Community design is not

excluded and may be invoked against a third party using the

spare part design in a rival complex product but may not be

invoked against the manufacture or use of the spare part

design for the purpose of repairing the complex product itself.”

I. Effects of art. 110.1 reg. No 6/2002 on the right of registration

“It seems clear that Article 110(1) does not prevent registration of designs of component parts of complex products. Thus, as is common ground, none of the grounds of invalidity specified in Article 25 of the Community Designs Regulation corresponds to Article 110(1).

It follows that Article 110(1) operates as an exception to the right conferred by registration in particular circumstances of use of the design. This reading of Article 110(1) is supported by the legislative history.”

Hence, the burden of proof falls upon the defendant.

II. Relationship between the appearance of a complex product and a spare part

Plantiff - Article 110(1) is to be interpreted in accordance with recital 13, and thus as restricted to component parts whose design is dependent on the appearance of the complex product.

Defendant - The inclusion of the dependence condition in recital 13 was an accidental result of legislative history, that what matters is the wording of Article 110(1) itself and that the omission of this condition from Article 110(1) should be given effect.

II. Relationship between the appearance of a complex product and a spare part

Recital 13 COUNCIL REGULATION (EC) No 6/2002

Full-scale approximation of the laws of the Member States on the use of protected designs for the purpose of permitting the repair of a complex product so as to restore its original appearance, where the design is applied to or incorporated in a product which constitutes a component part of a complex product upon whose appearance the protected design is dependent, could not be achieved through Directive 98/71/EC.

II. Relationship between the appearance of a complex product and a spare part

“Must Match” - dependency to the overall design of the product ≠

sympathetic, upgrade etc.

“The purpose of this is to ensure that the original equipment manufacturer cannot monopolise the aftermarket where the owner of the product has no realistic alternative to replacing the part with one of the same design if the original part becomes damaged.”

III. Purpose of the repair

Defendant - test was simply one of considering the intrinsic properties of the component part, and that it was sufficient if the component part was suitable for use for repairing the complex part. To apply the exclusion, it would be sufficient to use the repair of even a certain number of the parts (25%) and the remaining part thereof could be used for product upgrades.

Plaintiff - how the component part in issue was normally used in practice: was it normally used to repair the complex product when the part was broken, damaged or worn, or was it normally used for another purpose, such as upgrading the complex product.

III. Purpose of the repair

The Court noted that although the language of the Article appears to focus on the actions of the repairer (typically a garage in the case of motor cars), it is also necessary to consider the position of the supplier of the component part (such as the Defendant) and the position of the end user (the owner of the car). It is common ground that the test is an objective one, and not one that depends on the subjective intention of the supplier, the repairer or the end user. It is also common ground that, if Article 110(1) applies, it protects the supplier, the repairer and the end user.

For these reasons the Court found that the language of Article 110(1), and in particular the words "is used … for the purpose of", directs attention to what the part is normally used for.

IV. Original appearance

Plantiff submitted that the original appearance means the appearance which the complex product had when it was sold by the manufacturer.

Additionally, in the present context, the Plaintiff maintained that it included not only parts fitted by BMW's factory, but also parts fitted by its authorized dealers.

Defendant "original appearance" included parts fitted by previous owners of the car, including upgrades.

The Court stated that the appearance of the complex product at the time of purchase is decisive.

Test

• Are we dealing with a component of a complex product (a set of alloy wheels is not a complex product)?

• Is the appearance of the examined component dependent upon or otherwise connected with the appearance of a given complex product?

• Is the component of the same appearance generally used for the purpose of repair of a damaged or worn component?

• Was the component of the same appearance fitted at the moment when the producer lost control over the complex product?

Positive answers to the above questions should be provided by the Defendant

Kitcars – going beyond the bounds

CRD - 000303169-0002 CDR - 000216650-0002

Conclusion

• The institution of limitation protection of the registered design does not raise any questions which cannot be effectively resolved.

• The scope of exclusion covers nothing more than what can be rather narrowly understood as spare part in common sense.

• The decision of liberalization of the spare parts market (melting the ice of “freeze plus” clause) depends only on the economy-based decision of each Member Country and/or finally EU Council.