Industrial designs protect the way a product looks rather than the way it functions or how it is branded. In the UK and Europe, registered design law places a particular emphasis on the external features of a product, and prevents protection being obtained for component parts of complex products that are not visible during normal use. Clearly, it does not make sense for the law to provide protection to the aesthetics of internal components of a product that will never be seen by the user. It would be hard to argue, for example, that the motherboard of a mobile phone contributes to the aesthetics of the exterior of the phone. However, it is less clear whether or not protection should be afforded to component parts that are deliberately designed as consumable elements for use within a larger system.
A recent case (R 299/2021-3) before the third Board of Appeal of the EU Intellectual Property Office (EUIPO) has ruled on just that. The case concerns a registered Community Design (000992078-0003) for a vacuum cleaner bag made by the German appliance manufacturer Miele.
A third party, Green Label Manufacturing Europe, applied to the EUIPO for the design to be declared invalid. Green Label argued that vacuum cleaners are complex products. Since vacuum cleaner bags are designed for use with vacuum cleaners, in Green Label’s view it followed that a vacuum cleaner bag is a component part of a complex product. Accordingly a vacuum cleaner bag should only be afforded protection to the extent that it remains visible during normal use of the vacuum cleaner.
It was argued that changing of the vacuum cleaner bag when it was full and replacing it with an empty one amounted to maintenance of the vacuum cleaner and therefore fell outside the meaning of “normal use”, which refers to the use of the vacuum cleaner when it is cleaning. In Green Label’s view, because the vacuum cleaner bag in question was entirely contained within the vacuum cleaner and could not be seen from the outside during cleaning, it was not visible during normal use. Accordingly, the vacuum cleaner bag fell entirely into the exclusion relating to component parts of complex products and could not be protected under a Community Design. In the first instance decision, the Invalidity Division of the EUIPO was persuaded by this argument and found in favour of Green Label.
Appealing the decision, Miele argued that although a vacuum cleaner itself is clearly a complex product, a vacuum cleaner bag should not be considered a component part of that complex product. In particular, Miele argued that a “component” part of a complex product is a component of the product without which the product as a whole cannot function. Miele contended that a vacuum cleaner could work in theory without the presence of a vacuum cleaner bag, and that this was supported by the existence of vacuum cleaners which do not comprise vacuum cleaner bags. Given that vacuum cleaner bags are frequently sold separately to vacuum cleaners, Miele concluded that a vacuum cleaner bag should more correctly be classified as a mere accessory for a vacuum cleaner. That is to say, a vacuum cleaner bag is a product in its own right, and not a component part of a vacuum cleaner.
In the appeal, the Board overturned the first instance decision and found with Miele. In its reasoning the Board noted that the law requires that all registered Community Designs must indicate the product to which the design is applied and the relevant Locarno classification of that product. In the present case, the indication of the product stated that the design was applied to a “vacuum cleaner bag” specifically and not “vacuum cleaners” in general. Likewise, the Locarno classification indicated by the applicant was 09-05, which again relates specifically to bags for vacuum cleaners and not vacuum cleaners themselves which fall under a separate class, 15-05. Accordingly, this was evidence that the product was not a component part of a vacuum cleaner.
The Board further found that when replacing a vacuum cleaner bag there is no need to disassemble the vacuum cleaner itself. Rather, the vacuum cleaner contains a compartment that can easily be accessed for the purpose of replacing the bag. Accordingly, the Board found that the replacement of the vacuum cleaner bag did not constitute repair, servicing or maintenance of the vacuum cleaner bag itself, but was in fact normal use of the bag. The Board also found that the presence of a vacuum cleaner bag is not required for examining the functionality of the vacuum cleaner, perhaps alluding to Miele’s argument that the vacuum cleaner would still work even without the bag present.
So what does this mean for designers and manufacturers? On the face of it, the decision adds to the body of case law supporting the idea that consumables can be afforded protection under a registered design and should therefore be welcomed by consumable-driven industries. In particular, the decision appears to align with prior national court decisions such as Samsung v. Maxperian in the Netherlands (District Court The Hague 30 November 2016, ECLI:NL:RDBHA:2016:14383).
which found that a toner cartridge for a printer should not be regarded as a component part of a complex product, since the printer itself was to be considered a complete product.
The decision also makes clear the importance of choosing the right indication of product when making an application for a registered design. For example, would the Board have been able to overturn the decision if Miele had indicated the design as being applied to a “vacuum cleaner (part of -)” and filed it under class 15-05 relating to vacuum cleaners? Whilst the Locarno classification is extensive, it does not cater for every type of product, and therefore there is a risk that in new and developing types of products the distinction between which parts of a larger system are considered a separate product in their own right may be more difficult to delineate. Mirroring the Board’s reasoning, in such situations a factor to consider may be whether or not the consumable is required for the larger product it is used within to work. However, whilst it is arguable that a vacuum cleaner would still work without the bag present, this may not extend to analogous products such as pods for drinks machines and ink and toner cartridges for printers, both of which contain media to be dispensed by the larger product. As such, the case law is still somewhat unclear on this point.
However, whilst the decision appears to support protection for consumable products, visibility during normal use is not the only exclusion that might apply to consumable elements. In particular, the Miele case did not test whether the shape of the red clip on the bag itself falls under the so-call “must fit” exclusion which prevents protection for features of a product that must be shaped and sized in a particular way to allow them to couple with another product, and neither did the case determine whether the clip falls under the exclusion preventing protection for features that are solely dictated by technical function. Under such considerations it may be possible to narrow the scope of protection of Miele’s design so that it is possible to design around it.
At Marks & Clerk, our designs experts regularly advise our clients on how to obtain the most from their design registrations and filing strategies. If you would like to know more about design protection strategies, whether registered or unregistered, please do not hesitate to contact us.