Industrial Property Law

A complex product is a product made up of multiple parts that can be replaced (Art. L. 511-5, para. 2, IP Code) . These parts can be protected under two conditions (Art. L. 511-5, para. 1, IP Code). They have a new and individual character only insofar as, once incorporated into the complex product, they remain visible during normal use of this product by the end user, with the exception of mainte …

Conditions of protection

A complex product is a product made up of multiple parts that can be replaced (Art. L. 511-5, para. 2, IP Code) . These parts can be protected under two conditions (Art. L. 511-5, para. 1, IP Code). They have a new and individual character only insofar as, once incorporated into the complex product, they remain visible during normal use of this product by the end user, with the exception of maintenance, service or repair. In addition, the visible features of the parts as such must meet the conditions of novelty and individual character. Connecting parts are also excluded from protection (Art. L. 511-8 IP Code).

A part that is not visible during normal use of the product, even for safety reasons, is not eligible for protection . Design protection is thus excluded for parts that are not visible from the outside once assembled. These can be copied by any manufacturer or equipment supplier for the development of mechanical spare parts.

Pursuant to the Ordinance of 25 July 2001, Article L. 511-5 of the Intellectual Property Code now stipulates that the visible nature of the part must be assessed in the light of normal use of the product in question. Normal use does not include regular disassembly and inspection of the product, or purely hypothetical individual uses . Prior to the reform, there was some inconsistency in case law as to the point at which visibility should be assessed. The Paris Court of Appeal had ruled that the apparent nature of product characteristics is assessed at the time the product is offered for sale , in the eyes of the purchasers of the model, even if they are partially or largely hidden during use of the product . However, the Court of Cassation has held that a design can only be protected if it is apparent to the end user, the fact that it is apparent when the products are marketed to professionals responsible for assembling them not being sufficient . This solution now seems to have become the rule , although a more recent judgment by the Paris Court of Appeal found that an industrial model, which includes views of a set of elements, is protectable even if only one of these elements remains visible after installation, since the end user necessarily sees the model in its entirety at the time of purchase .

The nature of the product must be taken into account when assessing the validity of the design with regard to the visible character requirement. For example, the condition of conspicuousness cannot be met for designs featured in an electrical switch, which by its very nature is integrated into a cabinet or box when used for safety reasons . Furthermore, features of a design which are excluded from protection because they are not visible must not be taken into consideration when assessing whether other features of the design meet the conditions for protection . Consequently, the fact that one part of a product is invisible in normal use does not prevent another part of the same product, which is visible, from benefiting from protection.

The visible character requirement, which is only mentioned in Article L. 511-5 of the Intellectual Property Code, to the exclusion of any other Article in Book V, only applies to component parts intended to be integrated into a complex product . However, Article 15 of the Proposal for a Directive on the Design Package stipulates that “protection shall be conferred for those features of appearance of a registered design which are shown visibly in the application for registration”, which would mean that the condition would become general.

CA Paris, 13 March 2012, LawLex202200007794JBJ, for car body or lamp components; Case T-11/08 Kwang Yang Motor Co., Ltd and OHIM, Judgment of 9 September 2011, LawLex202300009001JBJ, which classifies as a part an internal combustion engine that can be incorporated into a lawnmower; CA Paris, 4 March 2005, LawLex202100003345JBJ, for a model of battery case that can be mounted and installed in telephones; 22 January 1999, LawLex200200001017JBJ, for a model of comb-clip that is partially or largely concealed when worn.

TGI Paris, 13 March 2009, LawLex202100003843JBJ, relating to models of contactors used in various industrial fields such as electric vehicles, telephone systems or welding machines.

CA Paris, 10 November 2015, LawLex201500001450JBJ.

Case T-39/13 Cezar Przedsiębiorstwo Produkcyjne Dariusz Bogdan Niewiński, Judgment of 3 October 2013, LawLex202300009723JBJ.

CA Paris, 4 March 2005, LawLex202100003345JBJ.

CA Paris, 22 January 1999, LawLex200200001017JBJ; CA Paris, 4 March 2005, LawLex202100003345JBJ.

Cass. com., 20 february 2007, LawLex200700000309JBJ.

CA Paris, 13 March 2012, LawLex202200007794JBJ, concerning bodywork components or car lamps; TGI Nantes, 27 May 2008, LawLex202200000812JBJ, concerning bodywork components that are perfectly visible, specific and non-interchangeable, and which, through their differences in shape, contribute to the aesthetic and unique appearance of a truck compared to others.

CA Paris, 18 June 2014, LawLex202200001240JBJ, concerning a gutter casing for which the lower courts held that, since it was intended to be buried, it could not be protected as a design since it was not visible and had no decorative function.

Cass. com., 9 March 2010, LawLex202100003845JBJ relating to electrical contactors.

 Directive No 98/71 of 13 October 1998, recital 12.

Industrial Property Law

441. Conditions of protection

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Les notions juridiques connexes

441. Conditions of protection

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise