Community Design – Judgment of the Court of Justice of the European Union on the “repair clause”

According to article 110 of the Community design Regulation “Until such time as amendments to this Regulation enter into force on a proposal from the Commission on this subject, protection as a Community design shall 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.”

This provision is commonly referred to as “repair clause”.

The Court of Justice of the European Union, on 20 December 2017, issued its judgement in the matter of the “repair clause” in the case “Acacia” (joined cases C‑397/16 and C‑435/16).

This is the second important EU case after Ford vs. Wheeltrims. Like the previous case, also the case Acacia involved Italian jurisdictions, namely, the Court of first instance and the Court of appeal of Milan.

The decision of the Court of first instance of Milan dated 27 November, 2014 was in favour of the car manufacturer. The Court stated that wheel rims cannot be considered as covered by the “repair clause” because the design of the car is independent from the design of the wheel rim. In fact, while the remaining parts of vehicles depend from the original appearance as designed by the car manufacturer, the wheel rim is chosen by the buyer among different models according to its own aesthetic taste. Before this decision, the same position was shared by the Courts of Milan, Turin and Bologna; the opposite position was taken by the Court of Naples.

The Court of appeal of Milan dated 15 June 2016, however, submitted the case to the Court of Justice for a preliminary ruling. The Milan Court of Appeal, contrary to the judgment of the Court of first instance, stated that wheel rims should be covered by the “repair clause”.

The Court of Justice of the European Union substantially confirmed the position of the Milan Court of Appeal, but added also some important principles, as follows:

– The ‘repair’ clause is not subject to the condition that the protected design is dependent upon the appearance of the complex product. Therefore, wheel rims are not excluded in principle from the application of the “repair clause”.

– The ‘repair’ clause is subject to the condition that the replacement part must have an identical visual appearance to that of the part which was originally incorporated into the complex product when it was placed on the market.

– In order to rely on the ‘repair’ clause, 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 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 the “repair clause”. 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 the “repair clause”.
In conclusion, the Court of Justice clarifies the conditions for the application of the repair clause. In addition, for the first time, the judgment set out a clear duty of diligence for the producer of non-original spare parts.



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