Does EU Designs Law on Component Parts that are Invisible During Normal Use Need Cleaning Up?
In Miele Computer Cie KG v Green Label Manufacturing Europe Limited R 299/2021-3 an EUIPO Board of Appeal overturned a decision which had found that a vacuum cleaner bag is not eligible for design protection if it is not visible during normal use of the vacuum cleaner.
In August 2008 Miele obtained a Community design registration for a vacuum cleaner bag, some of the depictions of which are shown here and here. In August 2019 Green Label filed an application for a declaration of invalidity on the basis that the design was registered in contravention of Article 4(2) of the EU Designs Regulations 2002-6 (Regulations). In particular, the invalidity applicant argued that Article 4(2) applies as a vacuum cleaner bag is only a component part of a complex product – namely a vacuum cleaner – and that during normal use of the vacuum cleaner the vacuum cleaner bag is not visible.
Article 4(2) of the Regulations states:
(2) A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:
(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and
(b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.
Article 3(c) of the Regulations states: (c) “complex product” means a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product. The meaning of “normal use” in Article 4(2)(a) is given by Article 4(3), which states:
(3) "Normal use" within the meaning of paragraph (2)(a) shall mean use by the end user, excluding maintenance, servicing or repair work.
The Cancellation Division of the EUIPO agreed with Green Label, finding the vacuum cleaner to be a complex product and that vacuum cleaner bags are consumables that are a necessary component for the proper functioning of the vacuum cleaners they were designed for. It found that the vacuum cleaner bags are not visible during normal use and that the changing or inspection of a vacuum cleaner bag is not part of normal use, but rather fell within the maintenance exception to normal use in Article 4(3).
On appeal Miele acknowledged that vacuum cleaners qualify as complex products, but argued that vacuum cleaner bags are not component parts of vacuum cleaners for Article 4(2) purposes on the basis that Article 4(2) applies to component parts that have a fixed, physical and lasting connection within the complex product. It was contended that the loose and temporary connection the vacuum cleaner bags make with the vacuum cleaner put them outside the scope of Article 4(2). Miele also classified vacuum cleaner bags as an accessory as bagless vacuum cleaners are known, and considered the fact that vacuum cleaner bags are sold separately as assisting their registrability.
The Board of Appeal noted that vacuum cleaner bags are listed in the Locarno classification and considered it would not make sense for there to be such a listing for something which is in general excluded from protection. The Board of Appeal both states that bags are required for the intended use of a vacuum cleaner, while also stating that the bags are not component parts for Article 4(2) purposes. Its way of making sense of this apparent contradiction is by emphasising that the bags are consumables that can be advertised and sold independently and at a wider range of locations than vacuum cleaners or their non-consumable component parts. It also states that a missing or full bag is not a reason to bring a vacuum cleaner in for repair. It was further considered that classifying the bags as a component part would make for an unusually high barrier to protection and have adverse design protection results for other consumables such as light bulbs, batteries, rolls of film or café capsules.
The Board of Appeal’s decision can be seen as trying to find a way within the confines of the Regulations of allowing design protection for consumable parts that are not visible during normal use of the complex product they are incorporated into. However, the interpretations required are somewhat strained. I think most people would say that a vacuum cleaner bag is a component part of a vacuum cleaner, and that replacing a full bag with a new bag is part of the maintenance of the vacuum cleaner – if it was not done then the vacuum cleaner would not function as intended. While the bags have a loose and temporary connection with the vacuum cleaner that does not mean they are not a component part thereof. That type of connection is dictated by practicality issues. It would be possible to make the bags have a stronger connection to the vacuum cleaner, but such bags or the vacuum cleaners that required them would not sell. Vacuum bags are not an accessory, they are required for the vacuum cleaner to work as intended. Bag type vacuum cleaners will still operate without a bag, but the efficiency will be reduced and the collected material will not be as easily disposed of. Although there are bagless vacuum cleaners, they are a different type of technology to bag type vacuum cleaners.
Although not stated therein, this decision can be seen as indicating that legislative changes are required to bring clarity to this area of EU Designs law. The decision indicates that design protection should be available for consumable parts that are marketed and sold separately to the complex products they are incorporated into whether or not they become invisible during normal use when so incorporated. Perhaps this could be achieved by inserting “non-consumable” before each instance of “component part” in Article 4(2).
Please note, the original decision was delivered in German. The English translation available from the website appears to be poorly translated in parts, so I also used Google Translate and obtained a more readable version.
Author: Quinn Miller