Invisible design protection in the European Union



After the Treaty of Rome in 1957, the European Economic Community (EEC), since 1959 has attempted to harmonize design law in the first six Members States, and has seen quickly that this harmonization would be hopeless at that point. Although the Community Trade Mark, the regulation for patents and trademarks entered into force in 1966, the European Union had to wait until late 1998 to adopt the directive 98/71/EC on design protection. The Directive, harmonizing the registered design law of the member states of the European Union (EU), was based on the recognition that a harmonized design registration system had become ever more important for businesses. The Directive's primary aim was to provide a level playing field throughout member states of the EU, assisting the aims of a single EU market, by harmonising national substantive laws on registered designs. Designs would be subject to registration, and to examination as to whether the relevant criteria for protection are met.

According to the first article (1.a) of the directive 98/71/EC, design of a product relates to the appearance of the product, in particular the shape, texture, colour, material used, contours and ornamentation. The Office for Harmonization in the Internal Market (OHIM) was created under European Union law to promote and manage Community trademarks and community design within the union. It carries out registration procedures for titles to EU industrial property and keeps public registers of these titles. Based in Alicante in Spain, the OHIM registers around 100 000 Community trademarks and close to 75 000 designs annually.

 The European design regulation remains uncompleted though. As a matter of fact, one area in which further harmonization is required is the divergent protection for spare parts and invisible items. According of the article 4.2 (a) of the Community Design Regulation (CDR), invisible items cannot be considered and protected as visible designs.

 "2. A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:

(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter"

 In others words, the designs of the parts belong to the compound goods and which have no effect on the decision of the customer on sale and which are not seen during usual usage of the goods, are not protected in EU law.

Therefore, even if an invisible item meets all the others requirements for protection as there are set in the article 4 of the CDR, as long as it is not a visible item; the European legislation will not recognize its novelty and will not grant it protection accordingly. Thus, invisible spare parts, component of a complex product are not protected at the EU-wide level. This includes, for example for a motor vehicle, spark plugs and oil filters, but not hubcaps or steering wheels, which are visible. Besides, the European regulations of design excludes from protection design features solely dictated by technical function according to the article 8 of the regulation.

"A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function."

 Based on the analysis of the European regulation that include CDR, OHIM and the first directive about design protection in Europe 98/71/EC; it seems genuinely difficult for an invisible item to benefit from design protection. However, the European court practices show that the European regulation can be circumvent in order to get a protection for an invisible design. Indeed, invisible design protection has gained currency in EU courts and tribunals.

Many invisible designs issues have been brought to European Court that can help us to clarify the invisible design situation within the European Union. 

The decision Kwang Yang Motor Co Limited v OHIM-Honda Giken Kogyo Kabushiki- 9 September 2011

This decision is really relevant regarding design protection as it has enabled invisible designs to get a protection by neutralising the "visibility" criteria required by the article 4 of the CDR.

The judges deemed that the CDR mentions that only components of complex products have to fulfil the visibility criteria. If the design cannot be considered as a component part, if it cannot be incorporated into another product because it is actually a whole product by itself, the article 4 does not apply nor the "visibility" criteria. In this case, the design can be "as long as it meets the others requirements- subject to European design protection.

The definition of a complex product is given directly in the article 3 (c) of the CDR: "complex product" means a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product."  The issue of visibility does not arise unless there is a product that can be separated.

 Drahtwerk Plochingen GmbH v AVI Alpenlandische-Industrie GmbH, ICD 3242, 16 February 2007

The next decision is really relevant to understand the reasoning of the determination of a complex product. As above-mentioned, this is the first step to take for an invisible design to obtain European protection. As a matter of fact, in this case the holder had registered a design for a wire mat. The Invalidity Division, although the wire mat was encased in concrete and therefore not visible, reckoned that it was not a component of a complex product because the wire could not be separated from the concrete. Even though the design was eventually invalidated due to a lack of novelty, it is really important as the visibility criteria did not apply and the design could have been subject to European protection.

Therefore, the criterion of assembling and dissembling a product has stayed significant in a great many decisions[1] when determining whether or not the product is a complex product or a component of a complex product. It has enabled as a consequence to clarify the situation of invisible design protection within EU and has shown that invisible could be eligible to European protection.

However, as we have seen in the abovementioned case design has still to comply with the requirement of novelty and individual character as required by the article 4.  

Molok OY v Ecosip OY, ICD 4919, 23 June 2008

 Austrotherm GmbH v Termo Organika Sp zoo, ICD 5353, 19 October 2007