The CJEU has provided guidance on what constitutes an infringement of a Registered Community Design (RCD) which is directed to a component of a complex product, where the infringing act is the repairing of the component of this complex product.
The judgement was published on 20 December 2017, and a copy can be found here.
Under current EU registered design legislation, it is possible to obtain a Registered Community Design (RCD) directed to a design which constitutes a component part of a complex product, if the component part, once it has been incorporated into the complex product, remains visible during normal use of the product.
For an RCD directed to such a design, the legislation provides a clause which states that the RCD is not enforceable against any competitor design, which is also a component part of a complex product, and whose purpose is to repair the complex product so as to restore its original appearance.This clause is often called the ‘repair exemption’.
The present case relates to a manufacturer, Acacia, of replacement wheel rims for use on cars manufactured by Audi and Porsche. Following disputes in national courts, guidance on the interpretation of the repair exemption was sought from the CJEU.
Determination by Court
In the judgement, the CJEU has identified three guiding principles to help determine when the repair exemption applies. The first guiding principle is that any use of a component part for reasons of preference or purely of convenience, such as, inter alia, the replacement of a part for aesthetic purposes or customisation of the complex product is excluded from the repair exemption.
The second principle is that the repair exemption applies only to replacement component parts of a complex product that are visually identical to the original parts which they replace.
The final piece of guidance is that for the repair exemption to apply, the manufacturer or seller of a replacement component part of a complex product must:
i) inform the downstream user, through a clear and visible indication on the part, on its packaging, in the catalogues or in the sales documents, that the replacement part incorporates a design of which they are not the holder; and that the replacement part is intended exclusively to be used for the purpose of the repair of the complex product so as to restore its original appearance;
ii) ensure, via terms of contract, that downstream users do not intend to use the replacement part for any other use other than repair; and
iii) refrain from selling the replacement part where they know or, in the light of all the relevant circumstances, ought reasonably to know that the replacement part in question will be used for some other use other than repair.
The CJEU has not applied their guidance to the facts of the case between Acacia, and Audi/ Porsche, so we currently await the outcome in the national courts as to whether Acacia’s acts fall within the repair exemption.
Adopting a wider view of the CJEU’s judgement however, the provided guiding principles should now give better certainty to manufacturers/sellers of replacement parts covered by an RCD as to whether their actions will constitute an infringement of the RCD.
If you would like any further information on the judgement, please speak to Sarah Merrifield or your usual Boult Wade Tennant adviser.