Interpretation of Article 110(1) of the Community Designs Regulation
Article 110(1) relates to the protection of designs for component parts of complex products and reads “...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.”
The claimant, Bayerische Motoren Werke Aktiengesellschaft (BMW) is the proprietor of a number of registered community designs (RCDs) directed to alloy wheels. The defendant, Round and Metal Limited (R&M) imported and sold replica alloy wheels, some of which were replicas of wheels designed by BMW. It was accepted that some of the wheels that R&M imported had essentially the same appearance as the RCDs at issue and, therefore, that R&M’s acts amounted to infringement unless Article 110(1) applied.
In deciding whether Article 110(1) should apply, the judge addressed four questions:
Who has the burden of proof?
The judge first addressed the point of whether Article 101(1) acts as a limitation on the scope of protection conferred by an RCD i.e. the claimant must prove that the defendants’ acts fall within the scope of protection or whether Article 110(1) operates as a defence in respect of certain acts that would otherwise be an infringement i.e. the defendant must prove that their facts fall within Article 110(1). The judge held that the latter interpretation is correct and the onus lay with R&M to prove their acts were not infringing acts according to Article 110(1).
Does Article 110(1) only apply where the design of the component part is dependent on the appearance of the complex product?
The Regulation, in Recital (13), explains the reasoning behind Article 110(1) where it refers to a component part of a complex product upon whose appearance the design is dependent. It is noteworthy that Article 110(1) does not recite “...upon whose appearance the design is dependent.” However, BMW argued that Article 110(1) should be construed purposively and that this should be read into Article 110(1).
In addressing the arguments of BMW the Judge noted that when construing an Article, the ‘context in which [the Article] occurs and the objectives pursued by the rules of which it is part’ must be considered. This is consistent with precedent set by the CJEU. The Judge decided that the wording of Recital (13) should be taken into account and that, in view of this, BMW were correct.
BMW’s RCDs were held not to depend on the overall design of the car because a range of wheel designs were marketed as being suitable for each of BMW’s car designs.
What is meant by “used for the purpose of repair of that complex product”?
On this point, the judge held that Article 110(1) should be read as “...normally used for the purpose of repair...” and does not apply if, for example, only 25% of the replicas are used for repair.
What is meant by “so as to restore its original appearance”?
Upon considering the “original appearance”, the Judge held that Article 110(1) refers only to the appearance of the complex product when it was originally sold by the manufacturer or the authorised dealer.
In answering the last two questions, the Judge relied on evidence that R&M’s replica wheels were mainly bought for the purpose of upgrading cars and from this determined that R&M’s replicas were neither normally used for the purpose of repairing cars nor used to restore cars to their original appearance.
Overall, the decision provides a useful interpretation of the spare parts defence under the regulation and has clarified when it may be available. Success in a spare parts defence depends on the dependence of the design of the spare part on the original appearance of the complex product and the part’s normal purpose must be to repair the complex product as opposed to enhancing or upgrading the complex product. If an alternative design of a component or spare part is a realistic option then the defence will not apply.1)