http://ipkitten.blogspot.com/2022/01/general-court-to-decide-whether.html
The EUIPO’s Board of Appeal recently addressed whether consumables shall be regarded as component parts of complex products (R2843/2019-3). The BoA decision has been appealed, so the General Court (and potentially, the Court of Justice) will provide guidance as to whether consumables fall under the scope of Art. 4(2) Design Regulation. In the meantime, this Kat explains, why consumables matter.
The decision in R2843/2019-3 concerned an invalidity application brought against Community design No 1 292 122-0001. The design (to the right) depicts an electrode for a plasma- cutting torch and is registered for “Welding torches (part of -)”. The invalidity applicant argued that the electrode is a component part of a complex product (the plasma- cutting torch). Because it is invisible during normal use of the torch, the invalidity applicant claimed that the visibility requirement set out in Art. 4(2) is not met.
In turn, the design holder argued that Art. 4(2) was not applicable to consumables. This is because they are to be treated separately from component parts and the electrode is a consumable.
Design Regulation 6/2002 includes a special category of products protected by design rights, namely, a complex product (e.g., a car or a lawnmower). Under Art. 4(2), a component part of a complex product shall only be protected by design rights, if, once incorporated into the complex product, it remains visible during normal use of the latter. Examples of component parts of complex products include vacuum cleaner nozzles or a mop head. If such component parts are not visible during normal use (for instance, when mowing a lawn), design protection is not available.
However, the Design Regulation 6/2002 is silent regarding whether consumables are individual products or should be considered component parts of complex products. Unlike being deemed a component part of complex product, if a consumable is treated as an individual product, the consumable would not be required to be visible during normal use (think of batteries inside a remote control) and would be eligible for design protection.
One criterion, suggested by the academic literature, to differentiate consumables from component parts is that the component part and the complex product shall have a similar lifespan. This, in contrast to consumables, since the latter enjoy a significantly shorter lifespan than the overall object, and therefore should not be deemed a component part.
This line of defence was adopted by the design holder in R2843/2019-3. Arguing that consumables are a separate category that does not fall under Art. 4(2), the design holder claimed that an electrode does not need to be visible within a torch to be protected.
The EUIPO BoA sided with the design holder, affirming that consumables are not component parts of complex products (similar reasoning was later relied on in a case concerning vacuum cleaner bags). According to the BoA, the main criterion for distinguishing a consumable from a component part is whether a product would be considered “complete” without it. According to the example given in the decision, if the trigger of the torch is missing then the torch would be considered “broken” and would require repair.
However, if a torch lacks an electrode, it would not be considered “broken”, rather the electrode would simply need to be replaced. An electrode being a consumable, the requirement of visibility in normal use is not applicable to it. Thus, the BoA found the contested design valid.
Taking issue with the BoA, the invalidity applicant has appealed the decision on the ground of infringement under Art. 4(2) (case T-617/21). The General Court will now give a much-awaited answer regarding whether consumables are to be considered component parts of complex products.
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