The European Court of Justice (ECJ) has ruled on the interpretation of the repair clause in the Community Design Regulation (6/2002/EC) (2002 Regulation).
Community designs (registered and unregistered) are governed by the 2002 Regulation and the EC Designs Directive (1998/71/EC) (1998 Directive) harmonising the requirements for registered design protection in EU member states. However, this did not include spare parts. So, member states retained their existing laws on whether spare parts should benefit from design protection, although they could only amend those laws if the purpose was to liberalise the market for spare parts (Article 14, 1998 Directive).
There is no protection as a Community design 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 (the repair clause) (Article 110(1), 2002 Regulation).
Article 19(1) of the 2002 Regulation confers an exclusive right on a registered Community design to use it and to prevent any third party from using it without the right-holder's consent.
A and P held Community design rights for aluminium alloy wheel rims.
AC manufactured replica alloy wheel rims identical in design to P's and A's car wheel rims. AC sold its wheel rims to customers through its German website.
The wheel rims manufactured by AC were stamped "NOT OEM", meaning that they were not made by the original equipment manufacturer, and documents indicated that the wheel rims were being sold exclusively as replacement parts for the purpose of making repairs.
A and P brought infringement proceedings against AC in Italy and Germany respectively.
The Italian and German courts referred to the ECJ in relation to whether the repair clause was available to AC as a defence.
The ECJ held that whether A and P could rely on their Community designs to prevent AC's activities depended on whether the wheel designs were a component of a complex product (the car) for the purpose of the repairing the car to restore its original appearance.
The repair clause was not subject to a condition that the protected design must be dependent on the appearance of the complex product. However, the repair clause was subject to the condition that the replacement part must have an identical visual appearance to that of the part that was originally incorporated into the complex product when it was placed on the market. If the replacement part did not correspond in its design to the original part, or if the appearance of the complex product had changed since it was placed on the market, the defence would not be available.
To rely on the repair clause, the manufacturer or seller of a component part of a complex product is under a duty of diligence as regards compliance by downstream users with the conditions laid down in the repair clause. These downstream users must be informed through a clear and visible indication on the product, its packaging, in catalogues or sales documents, that the component part incorporates a design of which they are not the right holder, and that the spare part is intended exclusively to be used for the purpose of repairing the complex product to restore its original appearance. In addition, downstream users must be contractually required not to deal with the products except in accordance with the repair clause conditions. Manufacturers and sellers must also refrain from selling a component part where they know or ought reasonably to have known that the part will not be used in accordance with the repair clause.
The purpose for which the replacement part is sold will determine whether or not the repair clause is available as a defence. If the purpose of replacement wheels is to upgrade or customise a vehicle, rather than to repair a damaged wheel and restore the car to its original appearance, the defence will not be available. The sale of a set of four wheels would therefore point to the purpose of upgrading or customisation rather than a genuine repair.
The duty of diligence in relation to downstream users places the onus on spare part manufacturers and sellers to ensure they comply with the conditions of the repair clause.
Case: Acacia Srl v Pneusgarda and another C-397/16; Acacia Srl and another v Porsche AG C-435/16.
First published in the January/February issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.