EU General Court grants broad EU design protection to “consumable” product parts

Here we look at a General Court decision about a registered Community design for an electrode used in welding torches, which may have broader application to design protection of consumable parts of products.

Introduction

In B&Bartoni / EUIPO (Case T-617/21), the EU General Court was asked to examine whether a given consumable product constitutes a ‘component part of a complex product’ within the meaning of Article 4(2) of the Community Design Regulation (6/2002) (“EU Design Regulation”).[1]

Such qualification would have important consequences for the design at issue as:

1. It decides whether or not such design is subject to the additional validity requirements of being “visible during normal use” and deriving its novelty and individual character from those parts of the design that are visible during normal use. The requirement of visibility during normal use in Article 4(2) and (3) of the EU Design Regulation has recently been interpreted by the EU’s Court of Justice in Monz/Büchel (Case C‑472/21), which we discussed here.

2. If a design is for a ‘component part’, the design holder cannot act against third parties offering such component parts for repair purposes. This follows from the so-called repair clause in Article 110 EU Design Regulation, which was  interpreted by the Court of Justice in Acacia / Audi and Porsche (Joined Cases C-397/16 and C-435/16) and which we discussed here.[2]

Case background

The case brought before the General Court related to a registered community design for an electrode used in welding torches, owned by Hypertherm, Inc.

The Czech company B&Bartoni spol. s r.o., claimed that the design was invalid. It argued that the electrode is a component part of a complex product and that, since it is not visible during normal use of the welding torch, it cannot be protected by an EU design right.

The EUIPO’s Invalidity Division agreed with the applicant and declared the registered design invalid. However, the Board of Appeal reversed that decision. It found that the electrode does not constitute a component part of a complex product and is therefore not subject to the requirement of visibility during normal use.      

The General Court’s decision

The General Court agreed with the EUIPO’s Board of Appeal decision and its supporting arguments.

In Acacia /  Audi and Porsche (Joined Cases C-397/16 and C-435/16), the Court of Justice defined the concept of a ‘component part of a complex product’ as covering multiple components, intended to be assembled into a complex industrial or handicraft item, which can be replaced permitting disassembly and re-assembly of such an item, without which the complex product could not be subject to normal use.

Referring to that definition, the General Court pointed to four circumstances that supported its decision that an electrode for insertion in a welding torch does not constitute a “component part of a complex product”.

  1. The electrode is a consumable

    The electrode is intended to be easily attached to the torch, consumed and used relatively quickly by the end user (max. five hours), meaning that there is no firm and durable connection with the complex product (paragraph 35). In addition, the electrode has a short lifespan, and the end user is therefore required to regularly purchase and replace the electrode. When doing so, they are able to assess its characteristics, irrespective of whether the electrode remains visible once inserted in the torch (paragraph. 37).
  2. No disassembly and re-assembly of the torch is required to replace the electrode

    Even though the shield, the retaining cap and the nozzle must be unscrewed and put back after the electrode has been replaced, the General Court found that this remains a simple operation which the end user can perform. It therefore cannot be regarded ‘disassembly’ and ‘re-assembly’ of the torch (paragraph 48). According to The General Court considered that a product the replacement of which does not require the disassembly and re-assembly of the product in which it is incorporated and which is specifically intended to be replaced regularly and in a straightforward manner by end users, is less likely to constitute a component part of a complex product than a product which is normally replaced by professionals with specific expertise (paragraph 47).
  3. The torch is regarded as complete without the electrode

    The General Court also took the end user’s perception into account, noting that it is unusual for the purchase of a complex product not to include its actual component parts. Without its component parts, a complex product will not, in principle, be perceived by the end user as a complete product capable of being subject to normal use, or as a product in good condition.

    However, here when purchasing a torch without an electrode or upon removal of the electrode from the torch, the end user would not perceive that torch as being broken or incomplete. The electrode was commonly advertised and sold separately from the torch (paragraphs 61 and 62). While the torch cannot fulfil its function of cutting or moulding metal without the electrode, interestingly the General Court held that this mere fact must not mean that the electrode is necessarily viewed as a component part of a complex part (in the sense of Article 4 EU Design Regulation).[3]  Otherwise, the General Court reasoned, consumable products would be (wrongly) excluded from design protection (paragraph 58).
  4. The electrode is interchangeable

    Another relevant consideration was that the electrode at issue cannot only be used with the design holder’s torches, but also with torches of others (and vice versa). The General Court considered that a product which cannot be replaced by a non-identical product or used in a different complex product is, in principle, more likely to be linked in a durable and tailored manner to that complex product, and therefore be a component part of that complex product (paragraph 69).

    The General Court emphasised that in Acacia / Audi and Porsche the Court of Justice found this point relevant for defining a component part of a complex product in the context of Article 110(1) EU Design Regulation, not Article 4.

Takeaways

The question whether a design relates to a ‘component part of a complex product’ in the meaning of Article 4 EU Design Regulation must be assessed on a case-by-case basis. This judgment relates to the design of a welding torch electrode. However, the General Court’s findings may have broader application, in particular to designs of consumable product parts.


[1] Article 3 EU Design Directive (98/71/EC) contains a similar provision.

[2] Note also that the new Regulation on Community Designs contains a revised repair clause, which we discussed here

[3] The General Court emphasised that in Acacia / Audi and Porsche the Court of Justice found this point relevant for defining a component part of a complex product in the context of Article 110(1) EU Design Regulation, not Article 4.