Following appeal from the EUIPO’s Board of Appeal, the EU General Court has issued its decision T-617/21 (B&Bartoli spol. S.r.o v EUIPO) regarding whether consumables are merely component parts of complex products, and therefore unregistrable, or design-registrable products in their own right.
The case concerned a challenge to the validity of a community design registration for an electrode for a plasma cutting torch, on the basis that the electrode was not “visible in normal use” and merely “a component part of a complex product.” However, due to the consumable nature of the electrode - meaning it was easily accessed and replaced regularly and sold as a separate product, even if was inside the torch during use, the Court confirmed earlier decisions that the design registration was valid.
Practical tips for designers
The case clarifies what types of components are registrable, and hence entitled to up to 25 years monopoly. The rule of thumb is that internal components that may have a lifespan similar to the main product, even if they could be repaired periodically, are probably not registrable; whereas a consumable part such as a replacement cartridge can be registered, subject to the requirement that its shape cannot be dictated solely by function.
It is also noteworthy that externally visible aspects of a complex product are generally registrable separately. For example, the shape of a handle or an aesthetic contour on a cordless drill can be isolated from the rest of the drill body in an application for design registration.
Similar considerations apply to registrability of designs at both the EUIPO and UKIPO.
Please contact us for further advice regarding registrability of designs in the EU and UK.