This discussion originally appeared on Sweet & Maxwell's Online Update for "Community Design Law - Principles & Practice". It was published, in amended form, as, Hidden Meaning? UK Perspectives on Invisible in Use Designs, [2003] 25 EIPR 450, and also in the AIPPI Journal of the Japanese Group of AIPPI, November 2003 p33.
Author: David Musker,
R G C Jenkins & Co

CDR Art 4 and its national EU counterparts excludes protection for non-visible component parts of complex products. This article unpicks the meaning of the exclusion.


What is a Complex Product?
“Complex product” is defined in Art 1(c) of the Directive, and the term is also used in Arts 3, 14 and 18 and Recitals 19 and 20 of the Directive (but, curiously, not Recital 12). It also features in the CDR, at Recital 13 and Arts 1, 4 and 110.
The definition requires that the product be composed of “multiple components”. These are presumably the “component parts” of the complex product. The one example of a “complex product” which was clearly intended was a car, which consists of hundreds of components.
The Commission has passed a number of Regulations
[1] exempting motor vehicle distribution agreements from the effects of Art 81 (ex-85) of the EU Treaty. These Regulations were under discussion during the passage of the Directive, and intellectual property issues were dealt with within them. It therefore seems appropriate to refer to these Regulations where appropriate to interpret the Directive.

According to these Regulations;

  • …motor vehicles are consumer durables[2] which … require expert maintenance and repair … (Regulation 123/85, Recital 4; Regulation 1475/95, Recital 4)
  • Motor vehicles are expensive and technically complex mobile goods which require repair and maintenance services…” (Regulation 1400/2002, Recital 21).
  • Motor vehicles are expensive and complex technical goods with a lifetime of, on average, at least 10 years. They need repair and maintenance…” (Explanatory Memorandum to Draft Regulation, para 7).
  • Motor vehicles are “expensive and complex goods” (Explanatory Memorandum to Draft Regulation, para 12).

These words find echoes in the explanatory and preparatory materials for the Directive;
Costly, long-lasting complex products such as motor vehicles” (Explanatory Memorandum to Proposed Design Directive, para 89).

It therefore appears that the intended meaning of “complex product” is a product containing such a number of components that it becomes technically complex, and one for which some of the components will need repair if the product is to achieve its desired life.
A complex product consists of parts “which can be replaced”. The reason for this appears to be to allow repair of the product by replacement of defective parts; the term is used in this sense in Art 14 (and Art 110 of the CDR).
The words “permitting disassembly and re-assembly of the product” seem misplaced; the purpose of disassembly and re-assembly in context is replacement of parts for repair. The natural English reading (that the possibility of replacing parts allows disassembly and reassembly) makes no sense (replacing parts does not allow disassembly, rather the reverse) and serves no purpose (taking apart and restoring is not a purpose served by replacement; rather, replacement is a purpose served by taking apart and restoring).
A product consisting only of two parts would not seem either to be “complex” or to bear any resemblance to the types of articles (cars) intended by the Commission or Parliament
[3].

Extent of the exclusion
Art 3(3) is an exception to the general rules on registrability, with serious consequences for an applicant, and exceptions are usually construed narrowly[4].
Two possible bases for the exclusion can be envisaged; firstly, the theoretical view that only visible aspects can contribute to a protectable design, and secondly, the practical and political intention to exclude protection for “under-the-bonnet” car spares and the like. The former French case law
[5], like that of the UK[6], held that a design must be visible to the end user. Some contend that this is may be required under the new French law.[7] The UK Designs Registry has published its current policy on parts not visible in use in Designs Practice Notice DPN 1/03.
The first would lead to an exclusion of any part not visible in use, so the fact that the wording of the Art extends only to non-visible aspects of component parts (which term was intended by the Commission to apply to separate parts such as car spares, but not integral parts) suggests that the second reading is intended. This is also consistent with the legislative history of the provision.
Thus, the exception needs to be construed broadly enough to achieve the end of excluding protection for “under-the-bonnet” car spares and the like, but not more broadly.


Not a Product?
Obviously, a complex product is a species of “product”, and it must therefore meet the definition of Art 1(b).

Example 1 – A hip joint replacement. Although it is akin to a component part of the human body, and is invisible in “normal use” (by the patient – as to whether the doctor is an “end-user”, see below), a human body is probably not a “product” (it is not “produced” like an industrial or handicraft item
[8]) and so the hip replacement is not a component part of a complex product. Thus, it is not excluded under Art 3(3). The same applies to any other medical implant or prosthetic.

Example 2 – A wall anchor for use in the wall of a house, or a rock wall of a mine. A rock wall is not a “product”, and it is unclear whether a house is a product either; it was not considered to be an “article” under the unamended Act.
[9] Thus, the wall anchor is not a component part of a complex product, and is not excluded under Art 3(3). The same may be true of other building components.

Not a Complex Product?

A component part of a product which is not a “complex product” in the sense of Art 1(c) is not excluded by Art 3(3).

Example 3 – A teapot and its lid. Consisting of only two component parts, it appears that this is not a “complex” product. Thus, detail of the inside of the spout (not visible in normal use) is not excluded under Art 3(3).

It must be possible to disassemble and reassemble the components. Components destined to be permanently fixed in place are not component parts of a complex product.

Example 4 – An Airfix™ model of an aircraft, in which a large number of plastic components are glued together (with a glue having greater adhesion than the cohesion of the plastic). It cannot be disassembled and reassembled, and is therefore not a “complex product”. Thus, detail of the inside walls of the aircraft (not visible in normal use of the assembled model) is not excluded under Art 3(3).


What is a component part?
The Commission used the phrase “component part” to indicate a separate part, and the word “part” to indicate something less than the whole (which could be an integral part). Art 3(3) only bites on “component parts”, not integral ones.

Not a component part?

Example 5 – The inside shape of the toe of a Wellington boot. This is the shape of a part, but not a “component” part of the boot, since the boot is a single integral whole which cannot be disassembled and reassembled. Thus, it is not excluded under Art 3(3).


“Component parts” of a complex product, which can be replaced, were intended to correspond to spare parts of a car. Consumables are not component parts of the complex product, and the same appears true of containers for consumables
[10]. This also accords with the views of the Commission on car spare parts - see the Distribution of Motor Vehicles (Regulation 1475/95) Explanatory Brochure (Question 24)[11]:

“…only parts which are to be installed in a motor vehicle so as to replace components of that vehicle are spare parts within the meaning of the Regulation. The distinction follows trade usage [Art 10(6)]. For example: oil and other liquids are not considered as “spare parts” under the Regulation.”


An example of an “under-the-bonnet” part which was (after a Hearing) accepted by the UK Designs Registry as not being a “component part” is the Porsche “engine cover” the subject of UK design 3000173.[12]

The same appears true of components used by a machine, such as staples, nails or price labels[13]. Possibly even parts of a product which are used up in its operation may be “consumables”[14] rather than true “parts”.

Example 6 – A staple for a staple gun. The staple gun is complete and in good repair, even when empty of staples. The staples are input into the gun, and used by it in its operation; they are not a component part of it.

Example 7 – An ink cassette for a typewriter. This merely supports ink ribbon, which is a consumable. Therefore it seems likely that it is not a part of the typewriter. The same appears true of other consumable containers, such as toner bottles in printers or copiers.


Who is the “End User”?
For cars, the end user is presumably the driver. The term is also used in the various Commission Motor Vehicles Regulations, apparently in this sense. However, in other cases the meaning of “end user” may not always be clear. It should not include a repair or maintenance specialist, but where one person owns a product and another accesses it for money, both are “using” it in different senses. For example, in Regulation 1400/2002, Art 1.1(w) defines “end-user” to include a car leasing company.

Example 8 – A vending machine is owned and operated by a vending company but used by the public to buy products. The coin validator, which is installed inside the vending machine, is sold to the vending company, and is not visible to the customer when installed but is visible when the vending machine is opened to remove cash. It is unclear whether only the general public are “end users” or whether those who periodically re-stock the machine, remove the cash and replenish the change also fall into this category. If they do, then the coin validator is not excluded under Art 3(3).


What is “normal use”?
This depends on the identity of the “end user” as discussed above.
There is also a question over the meaning of the word “normal” – does it refer to the user (i.e. any action performed by a normal end user will perform, even if relatively infrequently), or to the activities of a given end user (i.e. only the “primary use” of the product – the use which the end user is most frequently engaged in or which takes up most of his time spent on the product)? If the latter, then the specific exclusions of repair, maintenance and servicing are either redundant or merely declaratory.

Example 9 – The petrol cap of a car. This is never visible when the car is being driven, but always visible when the driver adds petrol. Every driver will regularly add petrol. It is “normal” in the sense of being an activity performed by the normal driver (all drivers do it). However, adding petrol might make up only a fraction of a percent of all time spent on a car by a given driver; it is not what he is “normally” (in the sense of “usually”) doing in the car. Depending on the sense of “normal”, it might or might not be excluded under Art 3(3).

Example 10 – The fan belt of a car. This is visible when the bonnet is open. The bonnet will regularly be open when a driver replenishes water for the windscreen wipers. This appears to be on all fours with adding petrol as in Example 9 (as water is also a consumable). Depending on the sense of “normal”, it might or might not be excluded under Art 3(3). The Commission appear to have assumed that it would be excluded, on the basis that the bonnet would only be opened for maintenance, servicing or repair. The answer might differ from one car to another, opening awkward enquiries of fact.


Not Repair?
The nature of “repair” in the context of industrial design has been discussed in several well known cases. A definition appears in the judgment of Lord Simons in L.N.E.R. v. Berryman [1946] A.C. 278 at 314[15]:

Repair is an ordinary English word meaning, “to restore to good condition by renewal or replacement of decayed or damaged parts”.

Repair may be performed either by the end user or by a repair specialist (but, for a “complex” product, it is almost always performed by the latter).
Replacing consumables is not “repair”. Consumables such as ink, petrol or oil, are not “decayed or damaged parts” and several cases have so held
[16]. (For further discussion on the scope of “consumables”, see above).

Example 11 – The inside of the part of a home coffee machine which retains the filter. A conical paper filter is used to make coffee; without it the machine cannot function. In practice the end user adds a new filter before each use, and throws it away after each use. The machine part is only visible when the filter is changed, and not when the coffee is being made. Replacing the filter is not “repair” but replacement of a consumable. The inside of the part may therefore be visible in normal use (depending on the meaning of “normal” – see above), and hence is not excluded under Art 3(3).

Example 12 – An internal computer disc drive. This is only visible when the casing is removed. However, it is fairly common for more skilled computer end-users to open the case, in order to upgrade the computer (for example to add a better graphics card, more memory, a faster processor or an extra disc drive). This operation appears not to constitute “repair”
[17] (or “maintenance or “servicing”), and might be “normal” use by the end user. If so, then the design of the internal disc drive (and other internal components) is not excluded by Art 3(3).

Not Servicing?
“Servicing” normally entails providing a service of comprehensive inspection or checking, followed by performance of any necessary maintenance or repair. It is a service provided to the end user by someone skilled – normally the manufacturer, or their agent or authorised distributor[18]. The term is used in this sense in Regulation 123/85 and Regulation 1475/95[19], and this is also consistent with usage of the term in the case law on industrial design[20].
For this reason, use by the end-user should not constitute “servicing”.


Not Maintenance?
“Maintenance” may have some overlap with “repair” and “servicing”. It appears that maintenance (in the sense used by the Commission in relation to cars) could include maintenance by the end user see – Art 4(i) of the Draft Commission Regulation on vertical agreements and concerted practices in the motor vehicle industry (2002/C 67/02).
The Privy Council refer to replacement of parts which are not yet defective as possibly an element of “preventive maintenance”
[21]. It is unclear whether the term “maintenance” is intended to cover “preventive maintenance” of this type.

Which Product?
One presumes that the complex product concerned is the one in which the applicant intended (at the time of filing) to incorporate the component into. This may not always be a unique product, however. If so, should the design be rejected if it would be invisible in any such product, or accepted if visible in at least one? It is arguable that a part which is designed to fit into a range of products, rather than destined to be a part of a single product, is not a “component” part of any of them, either by similar economic logic to that applied under the previous UK law in the Ford and Iveco Fiat cases[22], or because there are no constraints on the design freedom of the designer of the part, since the products will presumably be designed to include the part rather than the reverse.

Example 13 - A new spark plug. The manufacturer may have designed a single spark plug to be installed in cars, motorbikes, and outboard motors for boats. Whilst it would not be visible in use of the car, it might be visible in the motorbike or outboard motor. The same applies to batteries, or other generic components.

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[1] EC Commission Regulation 123/85 of 12 December 1984, Commission Regulation (EC) 1475/95 of 28 June 1995, and Commission Regulation (EC) 1400/2002 of 31 July 2002 OJ L 203/30, 1.8.2002 (Draft published as 2002/C 67/02)
[2] A phrase also used to describe cars in British Leyland v. Armstrong (House of Lords), [1986] R.P.C. 279
[3] Although “multiple” has been transposed as “at least two” in the UK Regulation - Section 1(3) of the Registered Designs Act 1949, as amended by The Registered Designs Regulations 2001, S.I. 2001 No. 3949
[4] See, for example, EPO Board of Appeal Decisions T 320/87 ([1990] OJ EPO 71; CLBA 1996), T 19/90 ([1990] OJ EPO 476; CLBA 1996), T 356/93 ([1995] OJ EPO 545).
[5] Decision of the CA Versailles 7 September 2000, PIBD 2000, III, p598, Decision of the CA Lyon 12 September 1996, PIBD 96, III, p601
[6] See Ferrero’s Application [1978] R.P.C. 473
[7] Patrice du Candé, "La Directive No 98/71 CE du 13 Octobre 1998 du Parlement et du Conseil sur la protection juridique des dessins et modèles", D. Aff No 143, 7 Jan 1999 pp10-15
[8] See, for example, Ocular Sciences v. Aspect Vision Care Ltd [1997] R.P.C. 289 in relation to contact lenses fitting the human eye
[9] See, for example, Concrete Ltd's Application, (1940) 57 R.P.C. 121, and Collier & Co's Application (1937) 54 R.P.C. 253
[10] See Canon KK v. Green Cartridge Co Ltd [1995] F.S.R. 877 at 901, and the judgement of Lord Hoffman in Canon KK v. Green Cartridge Co Ltd, Privy Council, [1997] F.S.R. 817 at 826, concerning toner cartridges
[11] Although this view had changed in 2002 – see Regulation 1400/2002 Art 1.1(s), which includes oil and other liquids, but not fuel
[12] in the name of Dr. Ing h.c.F. Porsche Aktiengesellschaft; see the report by E Lyndon-Stanford on the website of Marks & Clerk
[13] See Dennison Manufacturing Co. v. Alfred Holt & Co Ltd, (1987) 10 I.P.R. 612, approved by the Privy Council in Canon KK v. Green Cartridge Co Ltd [1995] F.S.R. 877 at 901, and the views of Jacob J. in Flogates Ltd v. Refco Ltd, [1996] F.S.R. 935 at 941, approved by Rogers J. in Canon KK v. Green Cartridge Co Ltd, Hong Kong High Court, [1995] F.S.R. 877 at 901
[14] See the views of Jacob J. in Flogates Ltd v. Refco Ltd, [1996] F.S.R. 935 at 941, in relation to consumable refractory components for gate valves for molten steel
[15] Applied by Foster J. in Gardner & Sons v. Paul Sykes Organisation Ltd [1981] F.S.R. 281 at 284 (also quoted by Rogers J. in Canon KK v. Green Cartridge Co Ltd, Hong Kong High Court, [1995] F.S.R. 877 at 898
[16] See Canon KK v. Green Cartridge Co Ltd [1995] F.S.R. 877 at 901, and the judgement of Lord Hoffman in Canon KK v. Green Cartridge Co Ltd, Privy Council, [1997] F.S.R. 817 at 826, concerning toner cartridges
[17] By analogy with the upgrade which was held not to be “repair” in Mars UK Ltd v. Teknowledge Ltd [2000] F.S.R. 138 at para 27
[18]During the term of the manufacturer’s warranty, cars are almost exclusively serviced by an authorised dealer” (Explanatory Memorandum to the Draft Commission Regulation on vertical agreements and concerted practices in the motor vehicle industry (2002/C 67/02), Annex 1 para 8)
[19] see Recital 4 and Art 4(1)
[20] See Canon KK v. Green Cartridge Co Ltd, Hong Kong [1995] F.S.R. 877 at 890, and Canon KK v. Green Cartridge Co Ltd, Hong Kong Court of Appeal, [1996] F.S.R. 874 at 882
[21] See Canon KK v. Green Cartridge Co Ltd Hong Kong [1995] F.S.R. 877 at 891, and the judgement of Lord Hoffman in Canon KK v. Green Cartridge Co Ltd, Privy Council, [1997] F.S.R. 817 at 826, concerning toner cartridges, even though the primary purpose there was to replenish the toner
[22] Ford Motor Co Ltd and Iveco Fiat SpA's Design Application [1993] R.P.C. 399 (RDAT); R. v Registered Designs Appeal Tribunal Ex p. Ford Motor Co Ltd [1994] R.P.C. 545 (QBD); R. v Registered Designs Appeal Tribunal Ex p. Ford Motor Co Ltd [1995] R.P.C. 167 (HL)