Designs and complex products: – what is normal?Posted on
Registered designs are becoming an increasingly important part of a company’s IP portfolio. For simple or whole products, protection is easy to obtain and easy to identify. But what about new components of an existing product – can these be protected?
Can I protect parts of a product?
Under UK design law, any product which is composed of two or more component parts is a ‘complex product’, no matter how complicated the actual product is.
Each of these component parts can be registered as designs, on two conditions:
- The part is visible during normal use;
- The visible features are new and have ‘individual character’ (i.e. it produces a different overall impression from older designs).
Europe has a very similar approach, defining a complex product as one which ‘is composed of multiple components that can be replaced permitting disassembly and re-assembly of the product’. Again, the part must be visible during normal use.
What counts as normal use?
Normal use is what occurs during everyday use of a product, in the way it was intended to be used. This excludes maintenance, servicing or repair work. So if the intended end-user can see it during normal use it can be protected.
What about protecting spare parts?
While component parts of a complex product can be protected using registered designs, there are some points to note. The repair of a complex product using a replacement component part does not infringe on the registered design of the part.
The classic example (and the partial reason for this exclusion) is the spare car parts market. There are two loud competing interests – car manufacturers who want to control the lucrative after-sales market, and spare part manufacturers who want this liberalised.
Typically, features of appearance that permit a product to be mechanically connected to another product are excluded from protection – the ‘must fit’ exclusion. Similarly, components of complex products that are used for the purpose of repair of the complex product, while being eligible for protection, are not enforceable against this repair use – the ‘must match’ exclusion.
However, care must be taken – there are scenarios where replacement parts are protected, particularly where the parts are used as upgrades rather than repairs. In BMW v Round and Metal, Round and Metal (R&M) were found to infringe the registered design of BMW’s alloy wheels. R&M claimed that their wheels were used for the purpose of repair, but because R&M sold complete wheel sets for lower spec models intended to emulate the higher spec models, the replacements could not be considered to be ‘restoring the product to its original appearance’ – R&M were in the business of upgrading, not repairing.
So to conclude, registered design protection for constituent parts should be carefully considered in addition to registering your complete design. While exclusions apply which may make enforcement difficult, these are intended to protect third party repair. Similarly, care should be taken by third party suppliers to ensure replacement components are marketed as repairs and not wholesale upgrades.
If you would like to know more, please contact your usual Barker Brettell attorney.