Invalidity of registered design for a hidden part of a complex product
A registered Community design (RCD) has been found invalid for being invisible during normal use of the product. The RCD 000831995-0002 protected a design for a vaporiser for an aromatic odour neutralizer, as shown below. Instructions provided with the product as sold indicated that it was a refill product, for use within an air-freshener housing.
The Community Registered Design Office (OHIM) was asked to consider whether the
design was invalid for failing to fulfil the requirement that a design applied to, or
incorporated in, a product that constitutes a component part of a complex product may
only be considered to be new and to have individual character if the component part,
when incorporated into the complex product, remains visible during normal use of the
latter. “Normal use” is defined as use by the end user, excluding maintenance, servicing
or repair work. It was suggested that the vaporiser was hidden within the air-freshener
housing during normal use and therefore a design for the vaporiser could not validly be
the subject of a RCD.
In defending the invalidity case, the proprietor argued that that the vaporiser was an independent product in itself and could be used without a housing. A print out from a website indicating this possibility was produced as evidence.
However, the Invalidity Division of OHIM found the proprietor’s evidence unpersuasive because it related only to a theoretical possibility. The only “real” use of the vaporiser was held to be use together with a housing, as indicated in the instructions provided with the commercial product. In such a use, the vaporiser was hidden within the housing. The RCD was therefore declared invalid because it lacked any visible feature that fulfilled the requirements of novelty and individual character.
Meanwhile, in an appeal decision on RCD No. 253778-0001, the OHIM Board of Appeal clarified the meaning of the requirement that a component part of a complex product be visible in normal use. The RCD related to chaff cutters, which are the rotating cutting parts of shredding machines. In normal use, the cutting parts are typically obscured by waste material placed in a hopper above the parts, and even when not so obscured, rotation prevents the features of the parts from being seen.
However, when waste material is delivered to the shredder by truck, the driver views the cutting parts using a mirror for safety reasons, whilst if delivered by conveyor belt, a safety camera is used to monitor the shredding process. The Board held that this was enough to consider the cutting parts as visible; the component part need not be visible in its entirety at every moment of use but rather it was sufficient that the whole of the component could be seen some of the time, in such a way that all its essential features could be taken in.
The Board suggested that component parts which are not visible in normal use are excluded in principle from RCD protection because “no-one cares what they look like”. It therefore appears that if something is in the least part visible in normal use, the law considers that there is at least a possibility that someone might care what it looks like, and so it may qualify, in principle, for protection.
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