2019/09> Designs: the liberalization of spare parts in France, coming soon?

The draft law on Orientation of Transport, adopted in first reading by the French National Assembly, may liberalize the market in certain spare parts used for repairing cars.

During the adoption of the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs,  the issue arose of whether to grant design protection to parts used to repair a complex product in order to restore its original appearance. The result was maintenance of the status quo: at present Member States can only change their national legislation in the direction of liberalization, i.e. a lack of protection of these parts.

In 2014, the Commission proposed an amendment to the Directive to limit design protection to original parts and allowing independent manufacturers to freely reproduce aftermarket parts intended for repair. Although this proposal was not adopted in the end, some Member States (United Kingdom, Italy, Spain) have nevertheless changed their national law.

In France, the protection of these parts as designs is available for any part that meets the legal conditions for protection of designs, including visibility, novelty and individual character, for a total of 25 years. On the other hand, if they meet the condition of “originality”, these parts can also be protected by copyright for a period of 70 years. This very broad protection was confirmed by a judgment of the French Supreme Court (Cass. Crim. December 2, 2003 n°02-88459).

The draft law on Orientation of Transport, still under discussion, adds a new case to the existing exceptions to copyright, via addition of a 12th paragraph to Article L.122-5 of the French Industrial Property Code (FIPC). Thus, once the work (namely, the spare part) has been disclosed, its author cannot prohibit:

“The reproduction, use and marketing of parts intended to restore its original appearance to a motor vehicle or trailer…”. This provision would come into effect on January 1, 2020.

At the same time, Article L. 513-6 of the FIPC is amended to exclude from the scope of the right conferred by a design: “acts intended to restore its original appearance to a motor vehicle or trailer… for (a) parts relating to glazing, optics and mirrors; b) or which are made by the suppliers who manufactured the original part”. It should be noted that the market for glazing and optics parts represents 30% of the spare parts market.

The protection period for a design registration on these two types of parts would also be reduced from 25 years to 10 years, while the entry into force would be January 1, 2020 for parts under a) and January 1, 2021 for parts under b).

As a result, dealings in some aftermarket parts, and all the parts manufactured by the suppliers that manufactured the original parts, would be liberalized. This would put an end to the old conflict opposing spare parts’ suppliers and car manufacturers, the former developing and manufacturing many vehicle parts but not being able to market them freely.  If the Bill is enacted, they would now be able to do so. These affected parts may represent 80% of a new vehicle (https://www.avatacar.com/blog/entretien-revision/les-pieces-techniques-dorigine/).

However, there are still some obstacles to this liberalization: first, the use of the tooling by the suppliers, and the question of the removal of the manufacturer’s logo on the parts since this logo is usually engraved in the molds. Actually, this removal of a trademark remains punishable under Article L.713-2-b of the French Intellectual Property Code. There is also the question of the access to the technical information necessary to enable the repair.

On the other hand, Article 110 of the Community Design regulation (EC) No 6/2002, known as the “repair clause”, provides that protection as a Community Design does not exist for a design that is a part of a complex product and that is used, within the meaning of Article 19, paragraph 1, to allow the repair of this complex product in order to restore its original appearance. The European Court of Justice in a decision of December 20, 2017 (joined cases C 397/16 and C 435/1) clarified, among other things, that the exclusion of protection of these parts is subject to the condition that the replacement part has an appearance visually identical to that of the part originally incorporated into the complex product when it was put on the market. The same judgment stated that in order to be able to invoke the so-called “repair” clause, the manufacturer or seller of a part of a complex product is subject to a duty of care as to the compliance, by downstream users, of the conditions imposed by that provision.

This ruling was recently applied in a judgment of September 11, 2018, rendered by the Court of Appeal of Paris against the importer of tuning products infringing European registered designs.

Indeed, only parts that are intended to restore the original appearance of a complex product, which means parts identical to the original ones, are excepted from infringement of the Community Design. When these parts are different, Article 110 of the European Regulation no longer applies and the holder of the European design recovers their capacity for action. The Court also ruled that the importer had to ensure that the parts they were selling in France were actually intended for the repair of a vehicle in order to restore its original appearance.

This solution should not be changed by the draft law.