Protection of spare parts: the EU Parlament quixotic changes

Fabio Angelini

It is available here, the Nov. 22, 2007 Report by the European Parliament on the proposal for a directive of the European Parliament and of the Council amending Directive 98/71/EC on the legal protection of designs. As everyone who follows this blog will certainly know, the Design Directive 98/71 of October 13, 1998 did not provide a harmonization of design protection for “must-match” spare parts (while it provided protection on the visible characteristics of a product, provided the design is new and possesses individual character).

The problem was that at the time of the adoption of Directive 98/71/EC it was not possible to reach agreement on this issue: some EU Countries (Belgium, Ireland, Italy, Luxembourgh, The Netherlands, Spain, United Kingdom, Hungary and Latvia ) had a liberalized (so called) secondary market for spare parts, while others in countries (Austria, Denmark, Finland, France, Germany, Portugal, Sweden, Cyprus, Czech Republic, Estonia, Lithuania, Malta, Poland, Slovak Republic and Slovenia) the market is protected and “non –original” spare parts cannot be sold.

Therefore, article 14 of the Directive 98/71 simply provided for a transitional arrangement whereby the Member States were allowed to maintain in force their existing legal provisions in this area ‘until such time as amendments to this Directive are adopted on a proposal from the Commission in accordance with the provisions of Article 18’ and could only change those provisions if the purpose was to liberalize the market for such parts (the “freeze-plus” solution).

The situation has been stalled for almost 10 years due to the fundamentally contrasting views (and economical interests) on the need to afford design protection for “must-match” spare parts on the secondary market even though from many observers and the EU Commission as well, design protection of spare parts leads to unjustified monopoly positions which harm the free competition and damage the consumers’ interests. It is also to be noted that the Design Regulation n. 6/2002 of December 12, 2001, has sided with the latter view since art. 110(1) says that “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 Report too sides with the liberalization of the secondary market. However, the proposed text of the amendment to the Directive is puzzling. Here below, side by side the text drafted by the Commission and the one proposed by the Parliament:

Protection as a design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 12(1) of this Directive, for the purpose of the repair of that complex product so as to restore its original appearance.

Protection as a design shall not exist for a design - incorporated in or applied to a product - which constitutes a component part of a complex product used within the meaning of Article 12 (1) of this Directive, for the exclusive and sole purpose of the repair of that complex product so as to restore its original appearance. Protection of design shall exist if a design is applied for decorative and appearance reasons only, i.e. not to repair this product in order to restore, but rather change its original appearance.

What is the meaning of “Protection of design shall exist if a design is applied for decorative and appearance reasons only, i.e. not to repair this product in order to restore, but rather change its original appearance”? If there is no need to repair and restore the original appearance, then the exemption should already not apply in accordance with the first sentence of the clause. Can anyone offer a explanation?