On 5th December 2023 the Council and the European Parliament have reached a provisional deal on the revision of the two legislative proposals of the designs package: the directive for the legal protection of designs and the regulation on Community designs.
In this article we review the information on the issue of design rights on spare parts as set forth in this provisional deal, which will have a significant impact on the automotive industry.
I.- Background on the need for a (spare parts) repair clause.
A typical example of the need for a repair clause is the area of automotive repair . An automobile is composed of many parts, and a person who owns the design right of a part can exercise his/her right against the party that infringes his/her design right.
Furthermore, many repairs are made to automobiles by replacing parts.
If a person other than the owner of the design right manufactures and sells spare parts that share the same design as the original, this would constitute an infringement of the design right.
However, there are certain automobile parts, such as hoods and doors, that must match the appearance of the original part.
If a design owner enforces its design right on a must-match part, consumers will only be able to purchase parts for repair from the design owner.
However, this would severely limit the range of consumer choice.
Therefore, the idea arises that design protection should not be extended to must-match parts in repair situations.
II.- Community Design Regulation and regulations in Spain and other EU countries to date.
In this regard, Directive 98/71/EC on the legal protection of Community designs provides for a repair clause as follows:
“Article 14
Transitional provision
Until such time as amendments to this Directive are adopted on a proposal from the Commission in accordance with the provisions of Article 18, Member States shall maintain in force their existing legal provisions relating to the use of the design of a component part used for the purpose of the repair of a complex product so as to restore its original appearance and shall introduce changes to those provisions only if the purpose is to liberalise the market for such parts.”
The provisions of this Article 14 have led to diverse responses regarding whether or not to introduce a repair clause in each EU country.
In Spain, the above-mentioned Directive 98/71/CE on the legal protection of European Community designs has previously been provided for in Article 8 of Law. 20/2003 of 7th July 2023, on the Legal Protection of Industrial Design:
“Third transitory provision. Designs of components of complex products.
- The protection of the designs of components of complex products shall be governed by the provisions of this Law. Nevertheless, and as long as the amendments to Directive 98/71/EC of the European Parliament and of the Council, of 13thOctober 1998, on the legal protection of designs and models, which are adopted in compliance with the provisions of Article 14 thereof, are not incorporated into Spanish domestic law, the rights conferred by the registered design may not be exercised to prevent the use of designs of components of a complex product, provided that:
a) The product in which the design has been incorporated is a component of a complex product on whose appearance the protected design depends.
b) The purpose of such use is to allow the repair of the complex product to restore its original appearance”.
On the other hand, in countries with leading manufacturers, such as Germany and France, the introduction of repair clauses had been postponed, but since 2020, repair clauses have been introduced in these countries. However, the content of the repair clauses introduced in each country differs.
III.- Details of Provisional Deal
The repair clause in the provisional deal is as follows.
“・Protection shall not be conferred on a registered design which constitutes a component part of a complex product, upon whose appearance the design of the component part is dependent, and which is used for the sole purpose of the repair of that complex product so as to restore its original appearance.
・The above cannot be invoked by the manufacturer or the seller of a component part of a complex product who failed to duly inform consumers, through a clear and visible indication on the product or in another appropriate form, about the commercial origin and the identity of the manufacturer of the product to be used for the purpose of the repair of the complex product, so that they can make an informed choice between competing products that can be used for the repair.
・The manufacturer or seller of a component part of a complex product shall not be required to guarantee that the parts they make or sell are ultimately used by end users for the sole purpose of repair so as to restore the original appearance of the complex product.”
It is expected to be approved and formally adopted by the Council of the EU and the European Parliament, and once the Directive enters into force, EU member states will have 36 months to transpose the Directive into national laws.
With regard to the repair clause, if, at the time of entry into force of the Directive, spare parts designs are not exempted and protection is provided in a Member State, protection shall continue to be provided for design applications filed before the entry into force of the Directive for a period of eight years after the entry into force of the Directive.
Companies in the automotive industry, whether they are car manufacturers or spare parts suppliers, will have to ensure that they comply with the changes within the EU.
Satoshi Minami
Vilá Abogados
For more information, please contact:
26th January 2024
