Is the underside of a bicycle saddle visible during normal use?
Component parts of complex products are also amenable to design protection, provided that they are visible during normal use (in German, the expression “intended use” is used) and the visible features meet the requirements of novelty and individual character. In some cases, however, it may be unclear what is meant by "normal use" and from what viewer perspective the component part must be visible in order to meet the statutory requirements for design protection, as the image below is intended to illustrate. For example, is it sufficient if an outside observer can recognize the design of the underside of the bicycle saddle during a jump with a bicycle?
In a request for a preliminary ruling (C-472/21), the BGH (German Federal Court of Justice ) therefore asked the ECJ (European Court of Justice) whether a component part (here: the underside of a bicycle saddle) as part of a complex product (here: a bicycle) is already visible within the meaning of EU Directive 98/71 and thus also of the German Design Act if it is objectively possible to recognize the design of the component in an installed state, or whether certain conditions of use and viewer perspectives are relevant for visibility. The BGH also asked the ECJ which criteria are used to assess the normal use of a complex product and whether the normal use intended by the manufacturer of the component part or the complex product plays a role in this. The exact wording of the questions can be found in C-472/21.
The ECJ's answers in brief:
According to the ECJ, the "visibility requirement" must be assessed in the light of a situation of normal use of that complex product. Visibility of a component part of a complex product must be assessed from the perspective of the user as well as from the perspective of an external observer. Normal use must cover acts performed during the principal use of a complex product as well as acts which must customarily be carried out in connection with such use, with the exception of maintenance, servicing and repair work.
What does this mean for the bicycle saddle?
Applying the interpretation of the ECJ, this would probably have to mean that the underside of a bicycle saddle fulfills the visibility requirement, since, for example, transporting the bicycle by loading it onto a trailer or into a trunk falls under the intended use and the underside of the saddle is visible to outside observers in the process. However, it remains to be seen how the BGH will view and decide this.
The question posed at the beginning in connection with the picture of the BMX bicycle therefore does not have to be answered at all. However, a hypothetical answer could be as follows: If the use of a component part is possible in several complex products, all these complex products must be considered for the assessment of the visibility requirement. Of course, a bicycle saddle can be used not only on ordinary city bikes, but also on a BMX bike. BMX is a sport that originated in the late 1960s in the USA, where athletes perform various tricks or stunts on a special bike with 20-inch wheels. According to this, the normal use of a BMX bike includes performing stunts such as wheelies and jumps where the underside of the saddle is visible to outside observers. Accordingly, this would also have to suffice as a justification for the visibility of the underside of a saddle within the meaning of EU Directive 98/71. The ECJ has in fact also stated that visibility does not have to be present at all times of use (see below).
Component parts of complex products are also amenable to design protection, but are subject to the special requirement that designs used in or incorporated into a complex product are considered new and have individual character only if the component part incorporated into the complex product remains visible during its normal use and to the extent that these visible features of the construction element itself meet the requirements of novelty and individual character (see § 2 Para 4 AT-MuSchG , § 4 G-DesignG, Art 4 CDR).
By definition, a complex product is a product consisting of several components that can be replaced, so that the product can be disassembled and reassembled (see § 1 Para 4 AT-MuSchG, § 1 letter 3 G-DesignG, Art 3 lit c CDR).
In the AT-MuSchG and G-DesignG, the EU Directive 98/71 was implemented, which sets European minimum standards for designs.
On the history of the present case:
In the present proceedings, an application for a declaration of invalidity was filed with the German Patent Office (DPMA) against the design of a bicycle saddle shown at the right side, since, according to the applicant, the design - the underside of the saddle - was not visible during normal use.
The DPMA rejected the application for revocation on the grounds that normal use also included "dismounting and mounting the saddle for purposes other than maintenance, servicing or repair", whereupon the applicant for revocation filed an appeal with the Federal Patent Court.
The Federal Patent Court declared the design invalid because only riding the bicycle and getting on and off the bicycle could be considered normal use, during which the underside of the saddle is not visible.
Questions for the ECJ
The owner of the design appealed against this decision to the BGH, which in turn turned to the ECJ and asked:
- Is a component part incorporating a design a “visible” component within the meaning of Article 3(3) of [Directive 98/71] if it is objectively possible to recognise the design when the component is mounted, or should visibility be assessed under certain conditions of use or from a certain observer perspective?
- If the answer to Question 1 is that visibility under certain conditions of use or from a certain observer perspective is the decisive factor:
a. When assessing the “normal use” of a complex product by the end user within the meaning of Article 3(3) and (4) of [Directive 98/71], is it the use intended by the manufacturer of the component part or complex product that is relevant, or the customary use of the complex product by the end user?
b. What are the criteria for assessing whether the use of a complex product by the end user constitutes a “normal use” within the meaning of Article 3(3) and (4) of [Directive 98/71]?’
Answers of the ECJ
The ECJ did not deal with the questions separately. We have "sorted" the ECJ's answers below.
First, the ECJ confirmed that the saddle of a bicycle or a motorcycle is a component part of a complex product.
Regarding question 1:
The ECJ stated that Directive 98/71 does not require that a component part incorporated into a complex product must remain fully visible at all times when the complex product is used, and that the visibility of such a component part to an outside observer must also be taken into account. At the same time, however, the ECJ held that an abstract assessment of visibility without reference to any concrete situation of use is not sufficient - thus a purely objective possibility of visibility seems to be excluded.
Regarding question 2a:
With regard to the question of whether the intended use of the manufacturer is to be taken into account when determining the normal use, the ECJ points out that while the German language version refers to "intended use", other language versions use the term "normal/usual use". Normal use by the end user usually coincides with a use in accordance with the intended purpose of the complex product as intended by its manufacturer or developer. The Union legislator also intended to refer to the normal use of the complex product by the end user in order to exclude the use of this product at other levels of trade and thus prevent circumvention of the visibility requirement. The assessment of the "normal use" of a complex product within the meaning of Directive 98/71 could therefore not be based solely on the intention of the manufacturer of the component or complex product.
However, the ECJ leaves open whether, and if so, how an intention of the manufacturer could be taken into account.
Regarding question 2b:
The term "normal use" is to be interpreted broadly because Directive 98/71 does not define the term in more detail. The ECJ essentially concurred with the opinion of the Advocate General. The latter had stated that the use of a product in accordance with its principal function often requires various acts which may be carried out before or after the product has fulfilled this principal function. These include, for example, the storage or transport of the product. It must therefore be assumed that the "normal use" of a complex product includes all of these actions. However, actions related to maintenance, servicing or repair are excluded.