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No EU design protection against spare parts

At the national level, there continues to be intense debate as to whether exceptions to design protection should be created for spare parts. Advocates hope that such a "repair clause" will lead to significantly lower prices, especially on the market for automotive spare parts. A corresponding provision has been in place at EU level for some time. In a recent decision, the German Federal Supreme Court ("BGH") has now answered fundamental questions which up to now have been open and which are highly relevant for practical application.

Background

Not only ready-to-use products are accessible to design protection. Parts of products, such as a table top or the radiator grille of a car, can also be independently protected as a design if they meet the requirements of "novelty" and "individual character". This applies in any case to those parts which remain visible when the overall product is used as intended and whose dimensions and shape are not completely determined by the technical function of the overall product.

In industries in which a considerable turnover is achieved with spare parts, in particular in the automotive spare parts trade, the original equipment manufacturers also control the market for spare parts through comprehensive design portfolios. For this reason, an exemption clause for spare parts, the so-called "repair clause", was created at EU level in 2001 with the aim of strengthening competition. According to Art. 110 (1) of the Community Design Regulation (CDR), no EU design can be invoked against a spare part used for the repair of a complex product. Design protection of the original manufacturer in relation to spare parts is therefore largely excluded.

Decision of the BGH of July 26, 2018

The parties to the legal dispute are a well-known German car manufacturer and an Italian manufacturer of car rims. On its website, the defendant offered wheels modeled on those of the applicant and for which the applicant had a Community design. The defendant had its own trade mark and the words "not O.E.M." (not Original Equipment Manufacturer) on the rims.

It was controversial so far whether spare parts such as rims, whose design is not absolutely necessary for a technically perfect repair, but only serves to restore the original optical appearance, could also fall under the repair clause. The BGH now clarifies that there is no subdivision into privileged and non-privileged spare parts. Previously, the opinion was predominantly expressed that spare parts independent of the entire product were not subject to the exception. In this respect, the scope of application of the repair clause is significantly extended. However, the BGH also clarifies that the spare part must correspond completely to the original to be replaced. This was not the case with some of the rims complained of, since the defendant had also offered the rims in other colors and sizes than the original products, so that the complaint was already granted for this reason.

In the case of the rims, which visually corresponded completely to the original products, the BGH ultimately did not consider the requirements of Art. 110 (1) CDR to be fulfilled either. The defendant should have expressly drawn the attention of its customers to the fact that its rims were imitations of a protected design (i) which it did not own (ii) and that the rims may only be used to repair a car (iii) and only to restore its original appearance (iv). The indication that it was not a product of the original manufacturer ("not O.E.M.") was therefore not sufficient, since many of the indications required by the BGH were missing. In addition, the defendant would have had to provide the information to German customers in German, which was also not the case.

Furthermore, in the opinion of the BGH, the defendant should have actively ensured that the rims it distributed were used by its customers exclusively for car repairs and, in particular, were not freely sold to end customers. Appropriate contractual clauses were cited as a suitable means of doing this.

Note

The judgment provides clarity in several respects. Suppliers of spare parts can invoke Art. 110 CDR irrespective of the type of spare part. This significantly expands the scope of application of the provision compared to the previous view, so that the importance of the repair clause is likely to increase.

Manufacturers of non-original spare parts must, however, make it very clear to their customers that the requirements of Art. 110 (1) CDR are met. The privileged treatment only applies to "genuine" spare parts for repair purposes; misuse should be prevented as far as possible. Manufacturers must play an active role here, for example by using corresponding contractual clauses vis-à-vis their customers, and must not remain inactive if there are grounds for suspicion.

Furthermore, manufacturers of original parts can still protect themselves against the repair clause at EU level by filing parallel national applications for their designs. As mentioned above, in Germany, for example, there is not (yet) a provision comparable to the repair clause for Community designs, allowing owners of national German designs to continue to take unrestricted action against counterfeit spare parts.

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