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Miele tidies up the law on design protection for component parts of vacuum cleaners

If the overall appearance of a product is protectable by a design registration, what about its individual components? This question has been raised several times and for a number of different product types where spare parts create an important revenue stream.

In Miele Computer Cie KG v Green Label Manufacturing Europe Limited R 299/2021-3 the registrability of component parts of a ‘complex product’ is considered in some further detail in relation to replaceable vacuum cleaner bags.

Green Label had successfully applied to have Milele’s Registered Community Design (RCD) for vacuum cleaner bags declared invalid for contravening the Article 4(2) of the EU regulations on community designs. Article 4(2)* states that:

  1. A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:

(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter… 

Normal use is defined as “use by the end user, excluding maintenance, servicing or repair work”.

Green Label had argued that a vacuum cleaner was a complex product, and that the bag was not visible in normal use, so was not eligible for protection.

Miele appealed the decision.

It was not disputed that vacuum cleaners were complex products. The debate was whether it was correct to consider a vacuum cleaner bag was a “component part” of the vacuum cleaner.

On one side, a vacuum cleaner bag was a necessary part of the vacuum cleaner, was designed specifically to fit a vacuum cleaner, and needed replacing from time to time to ensure continued operation of the vacuum cleaner. Normal use of the vacuum cleaner was argued to be the action of cleaning, so that replacing a bag (from a concealed chamber) would fall outside this normal use and would constitute maintenance or repair.

On the other side, the bags were never intended to be a permanent part of the vacuum cleaner and lacked any ‘permanent’ connection, the cleaner would still function without the bag, and bags were regularly purchased separately from the cleaners. The bags should thus be considered consumables, replaced as part of the normal use of a vacuum cleaner, and not component parts.

In overturning the original decision, the EUIPO Board of Appeal found that vacuum cleaner bags are not used for repairing, servicing or maintenance of a vacuum cleaner. Rather, they are consumables which are advertised and offered for sale independently on the market. In reaching the decision the Board considered  the existence of a separate Locarno Classification for vacuum cleaner bags.

It was also noted that regarding a vacuum cleaner bag as a component which is incorporated into a complex product would provide an unusually high barrier for protection that would no longer be compatible with higher-ranking law. Specific reference was made to a previous judgment of the CJEU, in which it was found that

“the expression ‘component parts of a complex product’ designates the various individual parts intended to be assembled into a complex industrial or handicraft item so that such an object can be assembled and reassembled, and the absence thereof would mean that the complex product cannot be used as intended.”

Since the bags were not, in the Board’s view, component parts of a complex product, they were eligible for registered design protection.

Some commentators have suggested that the Board’s decision requires some stretching of the wording of the provision. To others it seems more of a stretch to suggest that a vacuum cleaner bag is a component part of a vacuum cleaner, or that changing a bag amounts to maintenance, servicing or repair of the vacuum cleaner. The decision also aligns with a 2016 national court decision in the Netherlands, which found that a toner cartridge is not a component part of a printer.

The question of whether changing a bag is maintenance, servicing or repair only seems to have been considered as part of the assessment of whether the bag should be considered a component part of the vacuum cleaner. It would be interesting to know whether the ‘normal use’ point, which seems to have gone Miele’s way, might still have saved the registration even if a bag were considered a component part.

Author: Chris MacDonald

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