Repair clause is not limited to components of a complex product whose appearance is decisive
21-12-2017 Print this page
Scope of repair clause in article 110(1) Community Design Regulation is not limited to component parts forming part of a complex product upon whose appearance the protected design is dependent. Repair clause applies only to component parts of a complex product that are visually identical to original parts. In order to rely on the ‘repair’ clause contained in that provision, the manufacturer or seller of a component part of a complex product are under a duty of diligence as regards compliance by downstream users with the conditions laid down in that provision.
Joined Cases C-397/16 and C-435/16 which set out similar questions on the scope of the repair clause in Article 110 (1) Reg. 6/2002 on Community designs. The cases concern a dispute between Acacia, which trades in, among other things, wheel rims, and respectively Audi and Porsche.
The CJEU rules that the clause does not make the exclusion of protection as a Community design for a design which constitutes a component part of a complex product which is used for the purpose of the repair of that complex product so as to restore its original appearance subject to the condition that the protected design is dependent upon the appearance of the complex product. According to the court, the wording, history nor context show that this is the case. This means that car rims also fall under the repair clause.
The clause applies only to component parts of a complex product that are visually identical to original parts. According to the Court this follows from the fact that the repair must be carried out in order to return the complex product the "original" appearance, which implies that for an appeal to the repair clause it is required that the part is used to return the external characteristics the complex product had when put on the market.
Finally, the CJEU rules that in order to rely on the ‘repair’ clause,the manufacturer or seller of a component part of a complex product are under a duty of diligence as regards compliance by downstream users with the conditions laid down in that provision. In this context, the Court considers that, although the manufacturer or seller of a component part of a complex product cannot be expected to guarantee, objectively and in all circumstances, that the parts they make or sell for use in accordance with the conditions, are, ultimately, actually used by end users in compliance with those conditions, the fact remains that, in order to benefit from the derogatory regime thus put into place by that provision, such a manufacturer or seller is, under a duty of diligence as regards compliance by downstream users with those conditions.
IPPT20171220, CJEU, Acacia v Audi and Porsche
