The International Trademark Association (INTA) filed an amicus brief before the Court of Justice of the European Union (CJEU) on December 2, in Monz Handelsgesellschaft lnternational mbH & Co. KG v. Büchel GmbH & Co. Fahrzeugtechnik KG, Case C-472/21. The case concerns the protection under design law of separable product features because of their character as component parts.
EU law provides design protection of component parts under the condition of “visibility during normal use.” INTA takes the position that this requirement should be interpreted in an abstract manner to align the protection of component parts with the protection of simple products. With this approach, the particular features or functions of the very product in dispute, the particular optical angles, the details of use, or the individual capabilities of users should not be relevant. As a general rule, inner components (in particular, spare parts for machines)—which, after assembly, are no longer visible—cannot be design-protected.
The underlying case concerns the design of the bottom side of a saddle for bicycles or motorcycles. The referring Federal Supreme Court of Germany (Bundesgerichtshof) is asking for guidance on how to properly interpret the EU provisions on the protection of component parts of complex products. Such protection is subject to two requirements— “visibility” and “normal use”—but excludes visibility during “service,” “maintenance,” and “repairs.”
INTA has already expressed its views, in a July 2018 mutual position paper written together with MARQUES and European Communities Trade Mark Association (ECTA), that the provisions on the protection of component parts should—de lege ferenda—be restricted for the spare parts market of complex machinery. In its brief, INTA took the position that any interpretation other than an objective approach to the term “visibility” will cause confusion in practice, will bring about inconsistent case law, and will generally weaken the concept of design protection.
About the International Trademark Association
The International Trademark Association (INTA) is a global association of brand owners and professionals dedicated to supporting trademarks and related intellectual property (IP) to foster consumer trust, economic growth, and innovation. Members include nearly 6,500 organizations, representing more than 34,350 individuals (trademark owners, professionals, and academics) from 185 countries, who benefit from the Association’s global trademark resources, policy development, education and training, and international network. Founded in 1878, INTA is headquartered in New York City, with offices in Beijing, Brussels, Santiago, Singapore, and Washington, D.C., and a representative in New Delhi.