Monz, German company, owns a German national registered design from 2011 for “saddles for bicycles or motorcycles”:

A second German company, Büchel, filed an application for a declaration of invalidity of Monz’s design registration in proceedings before the German Patent and Trade Mark Office (hereinafter the DPMA), claiming that the design registration did not meet the requirements for legal protection as a design under paragraph 4 of the German design protection law, which transposes Directive 98/71 and concern parts incorporated into complex products.

Büchel argued that the design applied to a saddle was not visible during normal use of that product.

By decision of August 10, 2018, the DPMA rejected the application for a declaration of invalidity, holding that although the bicycle saddle to which that design is applied is indeed a “component part of a complex product”, that component part nevertheless remains visible during normal use of that product. The DPMA took the view that normal use of such a product also covers “the disassembly and reassembly of the saddle for purposes other than maintenance, servicing or repair work”.

Büchel brought an action before the German Federal Patent Court.

By decision of February 27, 2020, the Court declared the design registration was invalid. According to the Court, only component parts which remain “visible, as component parts of the complex product, after they have been mounted/incorporated in it” are automatically eligible to benefit from legal protection of designs.

The Court held that component parts that remain “visible only as a result of or at the time of its separation from a complex product” cannot be regarded as satisfying the condition of visibility. Therefore, they cannot benefit from design protection. The Court considered riding a bicycle and getting on and off a bicycle to be normal use. Therefore, the underside of the saddle is not visible either to the end user or to a third party during such use.

Monz brough an appeal before the German Federal Court of Justice who considered that the outcome of the dispute in the main proceedings depends on how the concepts of “visibility” and “normal use” within the meaning of Article 3 (3) and (4) are to be interpreted.

Consequently, the German Federal Court of Justice decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

“1) 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 recognize the design when the component is mounted, or should visibility be assessed under certain conditions of use or from a certain observer perspective?
2) 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 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]?”

According to the Court of Justice of the European Union, Article 3 (3) and (4) of Directive 98/71 must be interpreted as meaning that:

the requirement of “visibility”, laid down in that provision, that is to be met in order for a design applied to or incorporated in a product which constitutes a component part of a complex product to be eligible to benefit from the legal protection of designs, must be assessed in the light of a situation of normal use of that complex product, so that the component part concerned, once it has been incorporated into that product, remains visible during such use;

to that end, the visibility of a component part of a complex product during its “normal use” by the end user must be assessed from the perspective of that user as well as from the perspective of an external observer, and that normal use must cover acts performed during the principal use of a complex product as well as acts which must customarily be carried out by the end user in connection with such use, with the exception of maintenance, servicing and repair work.