Can I commercialize spare parts protected by third-party designs? 

A brief historical overview 

In 1998, the European Parliament and Council adopted the Directive on the Legal Protection of Designs. Its goal was to harmonize national design laws to ensure fair competition within the European Union. 

However, during the drafting process, member states could not reach a consensus on the protection of spare parts. No agreement was reached on this matter. 

The result? 

National legislation within the EU remained inconsistent. Some countries included a "repair clause" allowing the commercialization of spare parts protected by third-party designs, while others did not. Furthermore, where such repair clauses existed, the conditions for their application varied from one country to another. 

What is the current situation in France? 

In the EU, design protection can be obtained : 

• Via a filing with the EUIPO to obtain a Community Design, which grants protection across the entire EU,
• Via national filings  with national IP offices for local protection. 

As a result, both Community Designs and French Designs coexist in France. 

The regulation creating Community Design protection includes a repair clause, which has been clarified through case law. 

Since January 1, 2023, France has also adopted a repair clause. However, the conditions for applying these clauses differ significantly. 

Thus, two distinct regimes exist in France, depending on whether the protection is Community-wide or national. 

What does this mean for the commercialization of spare parts in France? 

Before introducing a spare part to the French market, it is essential to determine: 

• Whether the part is protected by a registered design,
• If so, whether it is a French Design or a Community Design. 

If protected by a french Design: 

A third party may commercialize a spare part if: 

• It is intended for use in vehicles or trailers (sectoral limitation)
• It is a glazing component
• If not a glazing component, the part must be marketed by the original equipment manufacturer. 

If protected by a Community design: 

A third party may commercialize a spare part if: 

• Regardless of the type of spare part (no sectoral limit); 
• If the part is identical to the one incorporated in the complex product (e.g., a hood or a rim), even if the complex product’s appearance (e.g., a vehicle) does not determine the design. 
• If the manufacturer or seller informs the consumer about the part’s origin and its purpose for repairs. 

If protected by both french and community designs: the conditions for both regimes must be fulfilled cumulatively. 

What does the future hold? 

A new directive and regulation have recently been ratified by the European Council, introducing an updated repair clause. Member states will have 36 months to transpose the directive’s provisions, while the new EU regulation on Community designs will apply as soon as it enters into force across the Union. 

The new repair clause closely resembles the one currently applicable to Community Designs. Under this clause, a third party may commercialize a spare part: 

• Regardless of the type of part (no sectoral limit); 
• If the part is identical to the one incorporated in the complex product, and its appearance is determined by that of the complex product, and 
• If the manufacturer or seller informs the consumer about the part’s origin, its repair purpose, and the identity of its manufacturer. 

Notably, the manufacturer or seller will not be required to ensure that end-users utilize the parts exclusively to restore the complex product's original appearance. 

While harmonization is on the horizon, the directive includes transitional provisions lasting eight years. 

Until full harmonization is achieved, it is crucial to thoroughly analyze the applicable design protections in both France and the EU. Additionally, appropriate consumer information measures must be defined before marketing spare parts. 

The Regimbeau team is here to guide and support you in securing your product launches!