Protection of designs not visible in use
The EU Community Design Registry (OHIM) has provided further guidance relating to the exclusion from registration for designs relating to component parts of complex products where that component part is not visible during normal use of the product.
In only its second decision on this subject, OHIM’s Invalidity Division considered a Community registered design (RCD) owned by AIC SA for a heat exchanger of the type that may be used in a boiler. The design registration was challenged by ACV Manufacturing NV on the basis that in normal use the heat exchanger would not be visible, being contained primarily behind protective plates and secondarily within a boiler box. AIC defended its registration by submitting that although the heat exchanger could be used in association with a boiler, this was not necessary and it could be used in installations where it would not be hidden.
It should be noted that the law on RCDs specifically excludes maintenance, servicing and repair work from the definition of “normal use”. Therefore the question to be decided was whether the product was visible during normal use by the end user.
The Invalidity Division acknowledged that the evidence provided by AIC did show theoretical uses for the heat exchanger outside of a boiler box. Nonetheless, it also noted that the only evidence for a real use of the heat exchanger was that provided by ACV, which showed the heat exchanger in use with boilers. The Invalidity Division concluded that the product depicted in the RCD was a component part embedded in boilers and was not visible in normal use in view of the closed boiler box, and thus declared the RCD invalid.
It is therefore clear from this decision that it is insufficient to show that a design might potentially be used in a way so as to be visible during normal use. Instead there must be proof of a genuine use in which the design is visible during normal use of the product. However, the decision does not exclude from protection designs that, depending on the particular installation, can genuinely be visible or can be concealed during normal use.
