Industrial Property Law

Article L. 513-6 of the Intellectual Property Code, enacted by the Ordinance of 25 July 2001, sets out a limited list of acts excluded from the design monopoly. Thus, acts performed privately and for non-commercial purposes, acts performed for experimental purposes and acts of reproduction for citations or teaching purposes cannot constitute design infringement.
1) Acts performed privately and for …

Excluded acts and equipment

Article L. 513-6 of the Intellectual Property Code, enacted by the Ordinance of 25 July 2001, sets out a limited list of acts excluded from the design monopoly. Thus, acts performed privately and for non-commercial purposes, acts performed for experimental purposes and acts of reproduction for citations or teaching purposes cannot constitute design infringement.

1) Acts performed privately and for non-commercial purposes

The proprietor of a design may not prohibit a third party from exploiting his or her creation on a private, non-commercial basis. This exception, which is also found in patent law, is rarely invoked in practice in design law, as it can be inferred from the deductive reading of Article L. 513-4 of the Intellectual Property Code, which lists the acts that may be prohibited by the titleholder.

2) Acts performed for experimental purposes

Like patent law, the experimental acts exception is designed to encourage development and innovation. It allows a third party to study a competitor's design in order to develop a creation of his or her own. Thus, no infringement is characterized by the reproduction of a columbarium model made in isolation, to implement a prototype from scraps, with the sole aim of verifying its proportions and aesthetics, the realization having never been marketed, sold, completed or installed, and not appearing in any documentation .

3) Acts of reproduction for citation or teaching purposes

Acts of reproduction of a design for illustration or teaching purposes are not infringements provided three cumulative conditions are met. These acts must indicate the registration and the name of the proprietor of the rights, conform to fair trade practices  and not be detrimental to the normal exploitation of the design (Art. L. 513-6, c) IP Code). In a judgment handed down on 10 October 2013 , the Paris Judicial Court ruled that the exception for illustrative purposes could not be applied to the reproduction of an umbrella in an advertisement for a cosmetics product, in the absence of an identification of the proprietor and registration of the umbrella model. According to the court, the umbrella was not an accessory but an essential element of the decor. In addition, the courts have held that the accessory exception applies to copyright and not to designs, which are governed by different rules.

According to the Court of Justice , the aim of the exception for purposes of citation (in French illustration) is to limit the rights conferred by the design to acts of reproduction which serve as a basis for explanations or commentary specific to the person intending to rely on the limitation, and to avoid discouraging innovation by preventing a company creating new products intended to be compatible with existing products from using the images of these products when lawfully offering its own products for sale, in order to explain or demonstrate the joint use of the two categories of products (pt 76 of the judgment).

The Court considers that the condition of conformity with fair trade practices is not met when the act of reproduction for purposes of making citations or teaching of protected designs is implemented in such a way as to give the impression that there is a commercial link between the third party and the proprietor of the rights conferred by the designs, when the third party wishing to avail himself of the limitation provided for in this provision in the context of the marketing of products which are used jointly with goods corresponding to the protected designs, infringes the rights conferred by the holder of the design, or where that third party takes unfair advantage of the commercial reputation of the rightholder (pt 80).

The condition that there be no undue interference with the normal exploitation of the design is intended to prevent the act of reproduction for purposes of making citations from negatively affecting the economic interests that the proprietor of the rights conferred by the design might derive from the normal exploitation of the designs (pt 82).

Finally, the European court points out that the obligation to indicate the source is only satisfied if the type of indication chosen for purposes of illustration and teaching in the course of a commercial activity enables a consumer who is reasonably well-informed, reasonably observant and circumspect to readily identify the commercial origin of the product corresponding to the design (pts 83 and 84).

4) Spare parts for motor vehicles and trailers

The Law of 22 August 2021  introduced a new exception to Article L. 513-6 of the Intellectual Property Code, relating to acts aimed at restoring the original appearance of a motor vehicle or trailer, within the meaning of Article L. 110-1 of the Highways Code (Code de la route), and which concern parts relating to window glazing or are implemented by the original equipment manufacturer (Art. L. 513-6, 4°, a) and b) IP Code). It also amended Article L. 513-1 of the same code to limit to ten instead of twenty-five years the duration of protection by registration of the parts mentioned in 4° of Article L. 513-6, for which it does not provide any exception to the exercise of the rights conferred by the registration of a design.

The source of these provisions is Directive No 98/71, which, in order to promote competition, introduces an exception to design protection for certain spare parts (Art. 14). The purpose of this “repair clause” is to exclude from protection the design on a part of a complex product used to enable the product to be repaired to its original appearance. In the absence of a consensus between Member States, Article 14 of the directive allows Member States to maintain their existing legislation in this area, but they can only introduce amendments to these provisions with the aim of liberalizing the market for such parts (the so-called “freeze plus” clause). The “repair clause” has been adopted in a variety of ways in national law by several European countries to authorize the sale, distribution, manufacture and import of spare parts not approved by vehicle manufacturers to enable the repair of a complex product to restore its original appearance.

The proposal for Designs Package Directive of 28 November 2022 aims, in particular, to complete and harmonize the internal market in spare parts. It contains a harmonized “repair clause” within the EU (Art. 19), putting an end to the existing transitional regime. The text excludes from protection so-called “must-match” spare parts, i.e. parts of complex products conditioned by their shape, used for the sole purpose of enabling the repair of the complex product with a view to restoring its initial appearance. This would make it legally possible in all EU countries to reproduce body parts identical to the original ones in order to restore a vehicle's original appearance. This exclusion cannot, however, be invoked by the manufacturer or seller of a part of a complex product as a defense in an infringement action if consumers have not been duly informed, by means of a clear and visible indication on the product or in any other appropriate form, of the origin of the product intended to be used for the purpose of repairing the complex product, an indication enabling consumers to make an informed choice between competing products that may be used for the repair. The “repair clause” is intended to apply only to future designs, with the protection of existing rights guaranteed for a transitional period of ten years.

The design holder's right does not extend to equipment installed on board a ship or aircraft registered in another country which temporarily enters French territory, nor to the importation into France of spare parts and accessories for the repair of such vessels or aircraft or in connection with such repair (Art. L. 513-7 IP Code).

CA Nancy, 4 January 2010, LawLex202300009286JBJ.

The condition of compliance with fair trade practices is inspired by the common law regime of fair-use.

TGI Paris, 10 October 2013, LawLex202300009287JBJ.

Case C-24/16 Nintendo Co. Ltd v Big Ben, Judgment of 27 September 2017, LawLex202300011303JBJ.

Law No 2021-1104 of 22 August 2021 on combating climate disruption and strengthening resilience to its effects, OJ of 24 August 2021. The Law of 22 August 2021 was adopted following the opinion of the Competition Authority, which recommended the adoption of a “repair clause” in French law, for more efficient operation of the automobile after-sales sector: Competition Authority, Opinion No 12-A-21 of 8 October 2012 on the competitive operation of the vehicle repair and maintenance and spare parts manufacturing and distribution sectors.

Industrial Property Law

494. Excluded acts and equipment

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494. Excluded acts and equipment

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Les décisions de justice citées dans ce paragraphe :

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