Europe: EUIPO Board of Appeal accepts design protection for consumable parts vacuum cleaner bag

In brief

EU design law attaches great importance to the appearance and external features of a product, and excludes protection for component parts of complex products that are not visible during normal use. In a recent decision of 23 August 2021 in case R 299/2021-3 (Miele Computer Cie KG v Green Label Manufacturing Europe Limited), the third Board of Appeal of the EUIPO ("Board") overturned a decision from the Cancellation Division which had found that a vacuum cleaner bag does not qualify for design protection because it is not visible during normal use of the vacuum cleaner.


Background 

Miele & Cie KG is the proprietor of registered Community design (RCD) No 992078-0003, applied for and registered on 26 August 2008 for 'vacuum cleaner bags' in Class 09-05, reproduced in the following views:

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Green Label Manufacturing Europe Limited lodged an application for a declaration of invalidity of this RCD pursuant to Article 25(1)(b) in conjunction with Article 4(2) of the Community Design Regulation (CDR). Article 4(2) requires that the design of a component part, once it has been incorporated into a complex product, remains visible during normal use of the latter. According to Article 3(c) CDR, a 'complex product' is a product composed of multiple components which can be replaced permitting disassembly and re-assembly of the product. Green Label argued that a vacuum cleaner is a complex product, and that a vacuum cleaner bag is not visible when the vacuum cleaner is used as intended, so that protection under the CDR is not possible.

By a decision of 16 December 2020, the Cancellation Division declared the RCD invalid. It held in particular that:

  • a vacuum cleaner is a complex product consisting of a large number of components which can be replaced so that they can be disassembled and reassembled. Like batteries, light bulbs or water filters, vacuum cleaner bags are consumables that are necessary for the functioning of a complex product and must be replaced from time to time. Although not all consumables are components, the fact that a vacuum cleaner bag is designed to fit into a vacuum cleaner indicates that it is a component of the complex product of a vacuum cleaner.

  • The intended use of a vacuum cleaner is the cleaning of a surface. Thus, the intended use consists in the action of cleaning. It is common knowledge that it is not necessary to change the vacuum cleaner bag before each use of the vacuum cleaner or even to check the level of the bag. Rather, changing the bag is part of the maintenance of the vacuum cleaner. Opening the vacuum cleaner was already to be classified as possible maintenance or repair work within the meaning of Article 4(3) CDR and was no longer regarded as use for its intended purpose. In the case of use for the intended purpose of a vacuum cleaner, the vacuum cleaner bag is not visible. To insert the bag, the vacuum cleaner is opened and, after inserting the bag, it is closed again, so that the vacuum cleaner bag is not visible when the vacuum cleaner is used as intended.

Miele lodged an appeal against this decision.

Decision 

The Board upheld Miele's appeal on the following grounds: 

1. In order to ascertain the product to which the RCD relates, it is necessary, according to the case law, to take into account both the relevant indication in the application for registration of the RCD (in accordance with Article 36(2) CDR) and the RCD itself, in so far as it describes in more detail the nature, intended purpose or function of the product (18/03/2010, T-9/07, Metal rappers, EU:T:2010:96, § 56). The Locarno Classification contains the term "vacuum cleaner bag" as a possible indication of a product. The RCD was applied for in respect of the product "vacuum cleaner bags" in Class 09-05 of the Locarno Classification; the reproduction shows such a disposable bag. According to the Board, it would make no sense to include a term as an indication of a product, but subsequently to deny protection for a RCD referring to it in all circumstances.

2. The Board further holds that a vacuum cleaner is undoubtedly a complex product consisting of several different components, which can be replaced. However, unlike a thread lifter, which is a component of the complex product vacuum cleaner nozzle, a vacuum cleaner bag does not constitute a component of the complex product vacuum cleaner within the meaning of Article 4(2) CDR. Vacuum cleaners are available on the market in different types, with and without a vacuum cleaner bag. Although the intended use of a vacuum cleaner requires a vacuum cleaner bag, the latter is not perceived as a component. Rather, vacuum cleaner bags are consumables, which may already be enclosed with the vacuum cleaner at the time of purchase but which can be purchased independently. A vacuum cleaner bag is independently advertised on the market, is sold in different places and is thus different from, for example, a thread lifter. A vacuum cleaner bag is also different from a rim, which is a component of the complex product 'car', since a car cannot be operated as intended without rims; indeed, it would not move from the spot.

3. According to the Board, vacuum cleaner bags are also not intended for the repair, maintenance or servicing of a vacuum cleaner. A vacuum cleaner bag is replaced as needed; a full vacuum cleaner bag is discarded and not reused. When a vacuum cleaner bag is replaced, the vacuum cleaner is not disassembled and reassembled; rather, the bag is placed in or removed from a compartment designed for it. The vacuum cleaner bag is not a prerequisite for testing the functionality of a vacuum cleaner. A missing or full vacuum cleaner bag is not a reason to bring a vacuum cleaner in for repair.

4. The Board finally considers that, if a vacuum cleaner bag were to be regarded as a component part of a complex product, there would be an unusually high barrier to protection which would no longer be compatible with higher-ranking law. Similarly, any design protection would thus cease to apply to, for example, light bulbs, batteries, film reels or café capsules which, although incorporated into a device, are also subject to independent distribution channels and systems.

The Board concludes that a vacuum cleaner bag does not constitute a component part of a complex product within the meaning of Article 3(c) CDR, so that the application of Article 4(2) CDR is excluded. The appeal is therefore successful, and the application for a declaration of invalidity is dismissed.

Comment 

The decision shows that the EUIPO is trying to find a way to allow design protection for consumable parts that can be advertised and purchased independently, but are not visible during use of the complex product in which they are incorporated, all while staying within the limits of the CDR. This case also underlines the importance of a correct product classification when applying for an RCD. 

 

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