Hypertherm, Inc. holds a Community design for an electrode to be inserted in a torch forming part of a plasma cutting system.

On December 22, 2017, B&Bartoni spol. s r.o filed an application for a declaration of invalidity of the aforementioned design before the European Union Intellectual Property Office (hereinafter EUIPO)

The applicant argued that the electrode protected by the Community design was a component part of a complex product, namely a torch forming part of a plasma cutting system, which was not visible during normal use of that product and therefore could not benefit from design protection.

On October 16, 2019, the Invalidity Division declared the contested Community design to be invalid on this basis.

On December 13, 2019, Hypertherm, Inc. filed a notice of appeal with EUIPO.

The EUIPO’s Board of Appeal upheld the appeal and rejected the application for a declaration of invalidity on the ground that the product represented in the contested Community design could not be regarded as a component part of a complex product.

B&Bartoni spol. s r.o. brought an appeal before the General Court of the European Union (hereinafter the General Court).

Therefore, the General Court must interpret the concept of “component part of a complex product” within the meaning of Article 4(2) of Regulation No 6/2002 on Community designs.

In its judgement of March 22, 2023, the General Court upheld the decision of the Board of Appeal, by adopting all the points considered by the latter to determine whether the product registered as a design is a component part of a complex product.

The Board of Appeal initially relied on the consumable nature of the electrode.

According to the applicant, the term “component part” does not suggest that such a part should present any particular nature, such as durability.

On the contrary, the General Court held that, since the concept of “component part of a complex product” has not been defined in the Regulation No 6/2002, the Board of Appeal correctly relied, among other factors, on the absence of a firm and lasting connection with the complex product and on the regular purchase and replacement of the electrode on account of its short lifespan.

Thus, the General Court held that the electrode at issue, as a consumable item for a torch, “is intended to be easily attached to the torch, consumed and used relatively quickly, and easily replaced by the end user without that operation requiring disassembly and re-assembly of that torch”.

Secondly, the Board of Appeal found that when an electrode is being replaced or changed, the torch and the cutting system are not disassembled and re-assembled, as required under the definition in Article 3 (c) of Regulation No 6/2002.

In that regard, according to the applicant, there is nothing in the wording of Regulation No 6/2002 that requires the complex product to be fully disassembled in order for a product to be regarded as “a component part” of such a complex product. In any case, in order to replace the electrode, several parts of the torch must be disassembled.

However, the General Court held that the Board of Appeal did not err in law and that the question whether the replacement of a product requires disassembly and re-assembly of a complex product is a relevant factor to be taken into consideration in determining whether such a product constitutes a component part of that complex product. Similarly, the Board of Appeal correctly found that when the electrode was being replaced, the cutting system and the torch were not disassembled or re-assembled.

The applicant also takes the view that, in the present case, the complex product at issue cannot be complete without the electrode since it cannot function without it.

In response, the General Court held that, when purchasing a torch without an electrode or when the electrode is removed from the torch, the end user will not perceive that torch as being incomplete. The General Court recognized that without the electrode, the torch and the plasma cutting system cannot fulfill their function. However, it concludes that this does not in itself mean that the electrode must be regarded as a component part of a complex product.

Finally, the General Court stated that, in order to determine that the electrode did not constitute a component part of a complex product, it is possible to take into account the fact that the electrode at issue could be replaced by a different electrode and that torches of different types could use the electrode at issue.

In light of these considerations, the General Court held that, according to the relevant factors relied upon by the Board of Appeal, the electrode at issue constituted a separate product and not a component part of a complex product.