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Joined Cases C‑397/16 and C‑435/16

Acacia Srl

Pneusgarda Srl

and

Audi AG

and

Acacia Srl

and
Rolando D’Amato
v

Dr. Ing. h.c.F. Porsche AG

(Requests for a preliminary ruling from the Corte d’appello di Milano and from the Bundesgerichtshof)

(References for a preliminary ruling — Regulation (EC) No 6/2002 — Community designs — Article 110(1) — No protection —‘Repair’ clause — Concept of ‘component part of a complex product’ — Repair of the complex product so as to restore its original appearance — Measures to be adopted by the user for the purposes of relying on the ‘repair’ clause — Replica car wheel rim identical to the original wheel rim design)

Summary — Judgment of the Court (Second Chamber), 20 December 2017

1. Judicial proceedings — Oral part of the procedure — Reopening — No obligation to reopen the oral part of the procedure in order to allow the parties to submit observations on points of law raised in the Advocate General’s Opinion)

(Art. 252, second para., TFEU; Rules of Procedure of the Court of Justice, Art. 83)

2. Community designs — Final provisions — No protection as a design for 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 — Application of the ‘repair’ clause — Conditions

(Council Regulation No 6/2002, Arts 3(a), 19(1) and 110(1))

3. Community designs — Final provisions — No protection as a design for 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 — Application of the ‘repair’ clause — Measures to be adopted by the manufacturer or seller of a component part of a complex product for the purposes of relying on the ‘repair’ clause — Duty of diligence as regards compliance with conditions of use by downstream users

(Council Regulation No 6/2002, Art. 110(1))

4. Community designs — Final provisions — No protection as a design for 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 — Application of the ‘repair’ clause — Conditions — No condition that the protected design is dependent upon the appearance of the complex product

(Council Regulation No 6/2002, Arts 19(1) and 110(1))

1. See the text of the decision.

(see paras 26, 27)

2. According to Article 110(1) of Regulation No 6/2002, protection as a Community design does not exist ‘for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance’.

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] within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance’.

In the first place, it should be noted that under Article 110(1) of Regulation No 6/2002, all protection for a ‘Community design’ is excluded, if the conditions laid down by that provision are met. It follows, as the Advocate General noted, in essence, in points 90 and 91 of his Opinion, that Article 110(1) is applicable only to component parts which are protected as a Community design and which, as follows from Article 1(1) of that regulation, satisfy the conditions for protection laid down in that regulation, in particular in Article 4(2) thereof.

In the second place, Article 110(1) of Regulation No 6/2002 applies only to ‘component parts of a complex product’. In those circumstances, it must be held that, through the words ‘component parts of a complex product’, Article 110(1) of Regulation No 6/2002 covers multiple components, intended to be assembled into a complex industrial or handicraft item, which can be replaced permitting disassembly and re-assembly of such an item, without which the complex product could not be subject to normal use.

In the third place, Article 110(1) of Regulation No 6/2002 requires, for the purposes of applying the ‘repair’ clause, that the component part of the complex product be ‘used within the meaning of Article 19(1) for the purpose of the repair of that complex product’. In that regard, first, it is apparent from Article 19(1) of Regulation No 6/2002 that the ‘use’ of the component part within the meaning of that provision covers the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. As is apparent from the wording of that article, that concept is construed broadly and encompasses any use of a component part for the purposes of repair. Secondly, the use of the component part must have the aim of ‘permitting the repair’ of the complex product. Thus, the possibility of relying on the ‘repair’ clause requires that the use of the component part be necessary for the repair of a complex product that has become defective, inter alia due to the lack of the original part or damage caused to it. Any use of a component part for reasons of preference or purely of convenience, such as, inter alia, the replacement of a part for aesthetic purposes or customisation of the complex product is therefore excluded from the ‘repair’ clause.

In the fourth place, Article 110(1) of Regulation No 6/2002 requires, for the purposes of applying the ‘repair’ clause, that the repair of the complex product be done ‘so as to restore its original appearance’. Having regard to Article 3(a) of Regulation No 6/2002, it should be noted that the appearance of a product or part of a product results from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

It is further necessary that the repair be done so as to restore the complex product to its ‘original’ appearance. It follows that, 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. It must be concluded that the ‘repair’ clause applies only to component parts of a complex product that are visually identical to original parts. Any use of a component part which is not for the purpose of restoring a complex product to the appearance it had when it was placed on the market is, accordingly, excluded. That is the case if, inter alia, the replacement part does not correspond, in terms of its colour or its dimensions, to the original part, or if the appearance of a complex product has changed since it was placed on the market.

(see paras 58-60, 63, 65, 67-72, 74, 75, 77)

3. Article 110(1) of Regulation No 6/2002 must be interpreted as meaning that, in order to rely on the ‘repair’ clause contained in that provision, the manufacturer or seller of a component part of a complex product are under a duty of diligence as regards compliance by downstream users with the conditions laid down in that provision. 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.

(see paras 86-88, operative part 3)

4. Article 110(1) of Regulation No 6/2002 on Community designs must be interpreted as meaning that the ‘repair’ clause in it does not make the exclusion of protection as a Community design for a design which constitutes a component part of a complex product which is used for the purpose of the repair of that complex product so as to restore its original appearance subject to the condition that the protected design is dependent upon the appearance of the complex product.

(see operative part 1)