Decision "Kraftfahrzeugfelgen II" (Motor vehicle rim II) of the German Federal Supreme Court (BGH)
According to Article 110 I of the community design regulation (CDR) 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.
The claimant is a car manufacturer. The claimant has several registered EU designs concerning motor vehicle rims.
In the present case, the defendant produces motor vehicle rims for vehicles of different manufacturers. On the vehicle rims the information “Not O.E.M.” is provided. The defendant has offered the rims on a webpage in German language. On the website was a notice in English language that these are tires copied or similar retrofit tires, which a completely compatible to the indicated vehicles and only dedicated for the purpose of their repair so as to restore its original appearance. Further, with respect to the rims dedicated for vehicles of the claimant it is written that these are only usable for these vehicles.
A previous instance court has determined that the rims of the defendant produce on the informed user the same overall impression, which was not contested before the federal court of justice.
In a previous decision, the BGH has referred a question to the European Court of Justice regarding the interpretation of the Art 110 I CDR. The European court of justice (EUCJ) has decided in the decision C-397/16, C-435/16 (Acacia vs. Audi, Acacia vs. Porsche) that :
- the "repair clause" according to Art 110 CDR does not require that the protected design be dependent on the appearance of the complex product;
- the "repair clause" is subject to the condition that the appearance of the spare part is visually identical to that of the component originally incorporated in the complex product when it was placed on the market; and
- the manufacturer or supplier of a component of a complex product, in order to invoke the "repair clause", is subject to a duty of care relating to the subsequent users' compliance with the conditions laid down in this CDR provision.
II. Decision of the Federal Supreme Court
The Federal Supreme court has now applied the decision to the above case.
The Federal Supreme Court confirmed that the exception according to Art. 110 I CDR is also applicable to vehicle rims in line with point (a) of the ruling of the EUCJ.
Further, the Federal Supreme Court decided that the exception according to Art. 110 I is not applicable if, in particular, the spare part has another color or another size with respect to the original part, i.e. which are not visually identical to the component originally incorporated in the complex product in line with the EUCJ.
Regarding to the vehicle’s rims, which are optically identical to the original part, the Federal Supreme Court considered that the defendant has not complied with the duty of care as required by the EUCJ, in particular that the above statement on the webpage was not sufficient.
The term “Not O.E.M” would not be considered to be interpreted that a design protection of a third party exists and is therefore not a notice for a design protection of a third party as required by the EUCJ. Further, the above cited notice that the rims are only dedicated for the purpose of their repair so as to restore its original appearance is not given in the languages generally understood in the countries to whose inhabitants the offer is addressed, here in German, as not every client could understand the English language.
Further, the Federal Court of Justice noted in line with the decision of the EUCJ that the manufacturer or vendor of spare part must use appropriate means, in particular contractual means, to ensure that subsequent users use the rims solely for the purpose of repairing the motor vehicle. Further, in case the manufacturer or the vendor knows that the subsequent user is not using the rims solely for the purpose of repairing the motor vehicle, or if the manufacturer or the vendor, taking into account all relevant circumstances, reasonably expects this, no sale should take place.
This decision of the Federal Court of Justice is in line with the decision of the EUCJ and shows that the rules for applying the “repair clause” are rather restrictive and requires serious attention on the side of the manufacturer or vendor of spare parts to avoid an infringement.
This is only a very short overview about the decision and should not be considered as legal advice.