Designs Practice Notice (DPN) 1/03

Published 7 January 2003

Component part of complex product visible in normal use

Section 1B(8) For the purposes of this section, 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 complex product; and

(b) to the extent that those visible features of the component part are in themselves new and have individual character.

Section 1B(9) In subsection (8) above "normal use" means use by the end user; but does not include any maintenance, servicing or repair work in relation to the product.

A component part of a complex product is therefore only registrable if:

it has "novelty" and "individual character" and
once it has been incorporated into the complex product, it remains visible in normal use of the complex product.

Will this objection be raised on any products which are not visible in normal use?

No - it must be a "component part" of a "complex product".

What is a "component part"?

The phrase "replaceable component parts permitting disassembly and reassembly" (Section 1(3)) clearly indicates a separate, removable part rather than just the inside surface of a product. Equally, the objection will not be raised against a product which may be invisible in use but which is not a component part of a complex product - eg a nail or screw which may not be visible in a wall.

Consumable items such as staples for a staple gun, spark plugs for a vehicle engine, or arguably containers for consumable items such as toner for a printer/photocopier or ink for a pen, need special consideration. Each is clearly "replaceable, separate, and removable" and they are clearly used in products which may be described as "complex", but are they actually "component parts" of the staple gun, the vehicle, the pen, or the printer/photocopier?

A possible argument is that they are all component parts because the complex product "would not work" without them. However, the legislation does not stipulate that a product must be in working order to qualify as a "complex product". A better question would be "is it a complete product" without the part/item in question? A staple gun is still a staple gun, with or without a supply of staples. Staples are not, therefore component parts of the staple gun - they are consumables which are used in the staple gun and simply replaced when the supply is exhausted. The spring assembly inside the staple gun - ie an actual "part" of the gun itself which may need replacement or repair at some time - is an example of a true component part.

In the same way, containers for consumables such as toner/ink cartridges are not actual component parts of the printer/photocopier/pen in which they are used. However, a motor car without spark plugs (or points, oil filter, or any "under-the bonnet" parts), is not a complete product and such parts are therefore considered to be "component parts" of a "complex product".

In general, consumable items which are used (and used up) in complex products will not be considered as "component parts" of those products and objections will not be raised against them. Parts which are not "used up" in the same sense as consumables but which might require replacement from time to time in order to enhance the performance of the complex product (eg, parts of engines such as spark plugs) are considered to be component parts and so may face objections to registration.

What is a "complex product"?

A component part of a product which was not considered to be "complex" would not attract an objection under Section 1B(8).

A complex product is defined as "a product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product" (Section 1(3)).

It would not be sensible, however, to apply this definition mechanistically as this would include, eg, a teapot and its lid. Clearly products such as this with only two or three parts do not bear any resemblance to the type of products (such as cars and computers) intended by the Commission or Parliament to be seen as "complex products". The original wording in the Regulations for the Community Design (on which the Directive is based) refers to "multiple components". Although this has been translated as "at least two" in the UK Regulations, the original term "multiple" is more in keeping with the explanatory material supporting the Directive: "Costly, long-lasting, complex products such as motor vehicles" (Explanatory Memorandum to Proposed Design Directive, para 89).

A more practical and appropriate definition of "complex product" is:

"A product containing a multiplicity, or such a number of, components that it becomes technically complex, and one for which some of the components will need maintenance, servicing or repair during the life of the complex product. This will usually be a product with mechanical/electrical/electronic features such as a motor car."

What does "visible in normal use" mean?

Normal use is use by the "end user" (Section 1B(9)) of the complex product: ie for a motor car, the owner or the driver rather than a service mechanic. Normal use would therefore include the primary purpose of driving the car along with all the other uses to which the car is put by the owner/driver. As cars are often seen as status symbols this includes being seen in the car and displaying the car when it is parked. All externally visible features of the car - its overall contours, ornamentation such as grille badges, door handles, wheel trims etc. would be "visible in normal use" as would interior features such as the steering wheel, seats and dashboard.

Normal use does not include any maintenance, servicing, or repair work in relation to the product (Section 1B(9)). It would therefore be insufficient to argue that a component part of an engine should be registered because it would be visible when the engine was being serviced. The part would have to be visible during "normal use" by the "end user". It may be, of course, that a particular component part is actually intended to be fitted into a complex product in which it would remain visible - eg in a motorbike or lawnmower engine rather than a motor car.

Equally, a design with the appearance of component part which would not normally be visible (eg a spark plug) could be applied to a completely different product such as a cigarette lighter or a paperweight. These are special cases which will be resolved in correspondence.

So, this objection will not normally apply to, eg:

a wall-plug (it would not be visible in the wall, but it would not be considered a component part of the wall. Also the wall is unlikely to be considered a "complex product).
a compact disc (it would not normally be visible when inserted in the CD player, but the disc would not be a component part of the CD player, and replacing the disc is not "maintaining, servicing or repairing" the player).
an ordinary battery would not normally be considered to be a component part of the complex product into which it is fitted, as such products are often sold without batteries. In such cases of course, the pattern applied to the battery would almost certainly determine acceptance or otherwise on the point of novelty. However, in some cases eg a watch battery, the battery is probably sold as part of the watch at the point of sale. So, if the general expectation is that the product into which the battery is inserted is normally sold with batteries already fitted, then it is reasonable to think of the battery in this instance as a component part.
toner cartridges for printers (the cartridge is a consumable item rather than a component part of the printer. Replacing the cartridge is not "maintaining, servicing or repairing" the printer, but part of "normal use" by the end user).

This objection will normally apply to, eg:

"under the bonnet" motor car parts such as spark plugs, air filters etc. (Although such replacements may be carried out by ordinary users (ie car owners rather than mechanics) they constitute maintenance or servicing of the car. Any maintenance, servicing or repair is excluded). Spark plugs, oil filters etc are not "consumables" in the sense that they are "used up" or "consumed" in the use of the complex product. They are component parts which may wear out or become less efficient, requiring replacement during servicing or maintenance of the complex product. Of course, such parts may be visible in normal use depending on the type of vehicle into which they are intended to be incorporated.
computer chips, connectors, etc (component parts of computers and other complex products, not normally visible when the product is in use.) It may be argued, of course, that the "end user" of a particular product would be a technician who would see the component part in normal use and not just during servicing or repair. All such matters will be covered in correspondence on a case-by-case basis.

What about "see-through" complex products?

Arguably the interior component parts in a transparent computer monitor (or any other complex product such as a see-through car) would be registrable (as long as they had novelty and individual character). In such cases the applicant may be asked to state that the component part would be visible because of the transparent nature of the complex product into which it is to be incorporated. This covers the examiner for acceptance of the registration; the market would effectively "police" this through third party actions questioning visibility in normal use.

General guidance

Examiners will only raise a "not visible in normal use" objection under Section 1B(8) if they are satisfied that the design is for a component part of a complex product, and that it would not be seen in normal use of the complex product by the end user.

As a general rule, examiners will raise objections to applications which appear clearly to be in respect of designs which do not meet the test of Section 1B(8). If the applicant shows that there is a reasonable possibility that the design will be visible in normal use, then the examiner will not pursue the objection unless he/she requires suitable evidence to be provided in order to establish such reasonable possibility.

Any such objection can be appealed by the applicant/agent, with an ex-parte hearing being held in the first instance followed by appeal to the Registered Designs Appeal Tribunal.

Once a design is registered, the registration may be challenged at any time by anyone who feels they can prove that it was a component part of a complex product and would not be visible in normal use (Section 11ZA).

Any enquiries about this notice should be addressed to Janet Folwell:

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Tel: +44 (0)1633 814191
Fax: +44 (0)1633 811174