Design protection is not only qualified to protect single part products but also complex products, like a car, which consists of numerous parts. The owner of a design model can prohibit anybody to manufacture and distribute a car which provokes the same overall impression.
But not only the car as a whole may be protected by a design model, also its (visible) parts can. This can force the owner of the car to buy any spare parts exclusively at the owner of the design model, who consequently would be free, to ask an unproportioned price. In order to avoid abuse of design protection, the European Community Design Regulation provided for the repair clause in art 110:
“Until such time as amendments to this Regulation enter into force …protection as a Community design shall not exist for a design which constitutes a component part of a complex product used … for the purpose of the repair of that complex product so as to restore its original appearance.”
Right the fact that this repair clause was put into the form of a transitional provision shows, that it was not undisputed, when created. In fact, two well noted litigations were brought to the (Italian) courts, which ended up at the European Court of Justice.
Between Acacia srl, the Italian manufacturer of alloy wheels on the one hand and Audi and Porsche on the other hand, a law suit on the scope of design models arose. In the combined judgement C-319/16 and C-435/16, the ECJ made some long expected clarifications concerning the admissibility of so called replica wheels.
Audi, Porsche and the German Government contended, that the ‘repair’ clause applies solely to component parts of a complex product upon whose appearance the protected design is dependent, namely parts whose shape is fixed (“must match”), with the result that alloy car wheel rims cannot be covered by that provision.
Acacia, the Italian and Netherlands Governments and the Commission maintain, on the other hand, that the application of the ‘repair’ clause is not limited to fixed‑shape parts, namely those parts whose shape is in principle immutably determined by the appearance of the complex product and cannot therefore be freely selected by the customer, so that light alloy wheel rims may be covered by that provision.
Contrary to what Audi and Porsche contended, it follows from the wording of Article 110(1) of Regulation No 6/2002 that the protected design’s dependence upon the appearance of the complex product is not one of the conditions listed in that provision. The aim of the ‘repair’ clause to liberalise, to a certain extent, the market in replacement parts.
It is therefore apparent from the wording of that provision that the application of the ‘repair’ clause is subject to several conditions relating, first of all, to the existence of a Community design, next, to the presence of a ‘component part of a complex product’ and, finally, to the need for ‘[use] for the purpose of the repair of that complex product so as to restore its original appearance’.
In order for the ‘repair’ clause to be applied, the component part must be used so as to restore the complex product to the appearance it had when it was placed on the market.
While the manufacturer or seller of a component part of a complex product cannot be expected to guarantee, objectively and in all circumstances, that the parts they make or sell for use in accordance with the conditions prescribed by Article 110(1) of Regulation No 6/2002 are, ultimately, actually used by end users in compliance with those conditions, the fact remains that, in order to benefit from the derogatory regime thus put into place by that provision under a duty of diligence as regards compliance by downstream users with those conditions.
- In particular, they must, first of all, inform the downstream user, 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, 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.
- Next, they must, through appropriate means, in particular contractual means, ensure that downstream users do not intend to use the component parts at issue in a way that does not comply with the conditions prescribed by Article 110(1) of Regulation No 6/2002.
- Finally, the manufacturer or seller must refrain from selling such a component part where they know or, in the light of all the relevant circumstances, ought reasonably to know that the part in question will not be used in accordance with the conditions laid down in Article 110(1) of Regulation No 6/2002.
Among many others, remains the question, whether the repair clause is to be applied also to after market wheels which were used for customizing. Will the owner of a set of wheels be obliged to repurchase the wheel from the original manufacturer in case of defect?
Whoever wants to avoid the questions around the repair-clause can revert to national design models, like eg the Austrian one, which does not contain such a clause.