Is a car key housing a component part of a car?

The repair clause in Art. 110(1) Community Design Regulation (‘CDR’) provides that the protection as a Community design shall not exist for a design which constitutes a component part of a complex product for the purpose of the repair of that complex product so as to restore its original appearance.

But when is a part a component part of a complex product? What kind of connection is necessary between the part and the complex product? This is explored in a recent judgment of the Higher Regional Court of Düsseldorf concerning the design for a housing of a car key (case I-20 U 291/22).

Background

Volkswagen AG (‘Volkswagen’) owns registered Community design (‘RCD’) no. 001342174-0001 for ‘locking and closing devices’ containing inter alia the following views: 

W + S Autoteile GmbH (‘W+S’) sold the following car key housing, which Volkswagen considered to infringe its RCD.

Volkswagen sued W+S and was successful at first instance. W+S appealed to the Higher Regional Court of Düsseldorf and filed a counterclaim for a declaration of invalidity of Volkswagen’s RCD. W+S also relied on the repair clause in Art. 110(1) CDR.

The Higher Regional Court’s decision

The Higher Regional Court of Düsseldorf dismissed the appeal and the counterclaim.

Counterclaim

W+S’ counterclaim for invalidity was based on the contention that the following views of Volkswagen’s RCD were inconsistent. The picture on the right would show a shadow gap around the key pad (see the red arrow) while the picture on the left would not: 

By reference to the Mast-Jägermeister v EUIPO decision of the Court of Justice of the EU (‘CJEU’, case C-217/17) the Higher Regional Court held that the representation of the design must clearly show which features are part of the design and which are not.

According to case law of the German Supreme Court, not each and every vagueness of the representation leads to the RCD’s invalidity. Rather, a design is subject to interpretation. The interpretation must be based on the actual intention of the design applicant as it can be discerned from objective circumstances and the applicant’s reasonable interests. The real product, whose appearance is supposed to be protected by the RCD, may be taken into account. It must also be considered that an RCD applicant intended to file an application with consistent views that grant a reasonable level of protection.

That said, the public’s interest in being able to clearly understand the subject matter of the protection must also be considered.

The Court found that the informed user would understand that the shadow gap is not visible on the left picture above because of the frontal view and the different lighting. The other pictures of the RCD confirmed that the visibility of the shadow gap depends on the angle and lighting conditions.

Infringement

The judges deemed the scope of protection of Volkswagen’s RCD to be average. The prior art submitted by W+S was either considered not disclosed before Volkswagen’s RCD or sufficiently different.

The Court confirmed that Volkswagen’s RCD and W+S’ car key housing create the same overall impression. The pictograms on W+S’ car key housing were considered to fulfil a merely functional purpose and were not the result of an aesthetic decision. Therefore, they were of low importance in the overall impression.

Art. 110(1) CDR

W+S argued that its use of Volkswagen’s design was justified under the repair clause of Art. 110(1) CDR.

The Higher Regional Court agreed with the lower court that a car key housing is not a component part of the complex product ‘car’. A car and a car key housing cannot be assembled and reassembled with each other. The informed user would not perceive them as a functional unit. A car key housing is an accessory that has its own function and is in itself a complex product.

Further, the rationale of the repair clause is to allow the use of an RCD for the repair of a complex product. Art. 110(1) CDR requires the defendant to show its intention to use the RCD as a replacement part for repair. To this end, the defendant must establish how it ensures that the part in which the RCD is incorporated would only be used for repair purposes.

The judges also found that the user would not perceive the replacement of a car key housing as a repair of a car. W+S did also not substantiate how it ensures that the car key housing would be used exclusively for repair. The Court considered such averments impossible because W+S did not offer a part of a car key housing to repair a broken one but a car key housing in its entirety.

Comment

The CJEU held in its Acacia judgment (joined cases C‑397/16 and C‑435/16, paras 64 and 65):

It must be noted that Regulation No 6/2002 does not define the concept of ‘component part of a complex product’. It is, however, apparent from Article 3(b) and (c) of that regulation that, first, ‘product’ means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product and, secondly, ‘complex product’ means a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product. Furthermore, in the absence of any definition of the term ‘component part’ in that regulation, it must be understood in accordance with its usual meaning in everyday language (see, to that effect, judgment of 4 May 2006, Massachusetts Institute of Technology, C‑431/04, EU:C:2006:291, paragraph 17 and the case-law cited).

In those circumstances, it must be held that, through the words ‘component parts of a complex product’, Article 110(1) of Regulation No 6/2002 covers 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.

The interesting question is thus what qualifies as ‘assembly’. The classical understanding of the word requires a physical combination of two parts. This is obviously not done with a car and a car key housing.

But the use of the car key and its housing requires the key’s frequency to be aligned with that of the responder in the car and that frequency must be unique in order for the car key to only open that particular car and not also others. Thus, a car key is a unique part of a car even though it is not physically attached to it. Could this alignment be considered ‘assembly’, taking into account that Art. 110(1) CDR does not require a strict interpretation (Acacia at para. 41)?

The question this case raises goes beyond car key housings and may concern all types of remote controls, such as, for instance, for video game consoles or TVs. A reference to the CJEU would be helpful to confirm the Higher Regional Court’s judgment and obtain greater clarity on how the term ‘assembly’ must be interpreted.