CJEU on the „repair clause“ [Art. 110(1) CDR] and duties of the replica-manufacturers/suppliers relying on it
The design of complexed product, e.g. a car consisting of a number of individual component parts forming its original appearance, can be protected by means of registered industrial designs. For the territory of the EC, for example by means of a registered EC design. The legal context provides Directive 98/71/EC covering also design protection of complex products, such as cars, and their visible parts. Thus, only the design right’s owner is allowed to use the design and third parties may not bring a car of similar design to the EU market.
Said pleasant situation for the design owner may become unpleasant for the consumer once some component parts of the bought complex product are crashed and he is looking for replacement component parts and must notice that the original parts are sold at premium prices. However, there is the option to switch to less expensive replica parts of identical design from third party providers due to the “repair clause” exception under Art. 110(1) of Regulation No 6/2002. According to said repair clause protection 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. This applies in any case for so-called “must match” parts (e.g. a car’s doors, fenders or headlights). But would it also be the case for “nice to have” parts, e.g. car wheel rims, having a shape and design not necessarily determined by adjacent form-fitting parts of a complex product? Are said parts also covered by the repair clause?
The Court of Justice of the European Union provided in its recent decision on joined cases C 397/16 and C 435/16 guidance on how to interpret said repair clause and the duties of the replica manufacturers/suppliers relying on said clause so that EC design owner cannot act against the sale of their replica spare parts. In detail:
First, in its decision, the court found that said repair clause covers any component part required for the intended use of the complex product, i.e. for example also car wheel rims without which the car could not be subject to normal use.
Second, the replica component part must be identical to the original part and must have the aim of “permitting the repair” of the complex product. For example the replacement of damaged original car wheel rims by replica rims identical in size, color and design would be acceptable, while switching to a different design-protected replica rim set for aesthetic purposes or customization of the car is excluded from the repair clause.
Third, in order to rely on said repair clause the following will have to be taken care of by the replica manufacturers/distributors:
a) Downstream user must be informed, through a clear and visible indication on the product, on its packaging, in the catalogues or in the sales documents, on the one hand, that the component part concerned incorporates a design of which they are not the holder, and on the other hand, that the part is intended exclusively to be used for the purpose of the repair of the complex product so as to restore its original appearance.
b) It must be ensured through appropriate means, in particular contractual means, that downstream users do not intend to use the component parts at issue in a way that goes beyond the repair clause.
c) The manufacturer/distributor must refrain from selling such a replica component part where they know or, in the light of the relevant circumstances, ought reasonably to know that downstream users have the intention to use it for purposes other than repair purposes.