Now you see me: When partial visibility of a design is enough – and when not

[Marcel Pemsel]

Now you see me: When partial visibility of a design is enough – and when not

Marcel Pemsel Monday, October 06, 2025 - complex product, component parts, designs, General Court, Marcel Pemsel, partial visibility, T-331/24

Visibility is a key aspect of design protection. But is it enough if the design is only partially visible during normal use? This question is explored in a recent judgment of the General Court (T-331/24).

Background

A Spanish individual obtained registration of an EU design (‘EUD’) with the following views:

The EUD was registered in Locarno classes 12-11 and 12-16 for ‘Motorcycles’. It displays a speed variator for motorcycles.

The Spanish company Yasunimotor, SL filed an invalidity application arguing that the design was not visible during normal use in accordance with Art. 25(1)(b) and Art. 4(2) Community Design Regulation (‘CDR’; the case was to be judged under the previous law, which is identical to the current EU Design Regulation in the relevant aspects).

The Cancellation Division of the European Union Intellectual Property Office (‘EUIPO’) upheld the application for a declaration of invalidity. The EUIPO’s Board of Appeal (‘BoA’) dismissed the appeal. The design owner filed an action with the General Court.

The General Court's Decision

The General Court dismissed the action.

The judges recalled that Art. 4(2) CDR requires an EU design for a component part of a complex product to be visible during normal use of the product. Normal use means use by the end-user, excluding maintenance, servicing or repair (Art. 4(3) CDR).

The contested design is intended to be applied to a speed variator, which is a component part of the complex product motorcycle. The design consists of two main elements, namely a bell-shaped body and a movable conical plate.

The speed variator can be mounted in two different ways:

• External mounting: The speed variator is mounted on the outside of the motorcycle, making some of its components easily accessible and largely visible.
• Internal mounting: The speed variator is mounted so that it remains partially hidden behind other parts of the motorcycle, such as a fixed conical plate, which is not part of the contested design.

On road motorcycles, the speed variator is mounted externally and is always covered by a casing for safety reasons, thus making it invisible during normal operation of the motorcycle.

On racing motorcycles, it is technically possible to mount the speed variator either internally or externally. If mounted externally, the speed variator is not covered by a casing in order to access it quickly and to reduce overall weight.

1. The first question was whether the external mounting of a speed variator amounted to normal use of a racing motorcycle.

a. The design owner had submitted the following screenshots taken from videos showing the design applied to a racing motorcycle, the external mounting being shown in the first and the internal mounting being shown in the second picture:

With respect to the first picture, the General Court referred to the fact that it was taken in a workshop and that Art. 4(3) CDR excludes maintenance, servicing or repair from ‘normal use’. Therefore, this picture did not prove that the design is visible during normal use.

b. Further, the design owner had submitted photographs from a magazine showing the visible parts of the internally mounted speed control device:

The Court found that pictures 2 and 3 only showed the internal mounting, which was irrelevant for the question whether external mounting is ‘normal use’.

c. The design owner had filed the following pictures from a tutorial showing how to remove the casing of an externally mounted speed variator on a road motorcycle: 

The judges discarded these pictures because the externally mounted speed variator was covered and, therefore, not visible. The fact that external mounting might be common does not mean that external mounting without protective casing amounts to normal use.

d. The possibility of mounting the speed variator externally on racing motorcylces without protective casing, as argued by the design owner, does not establish that it constitutes normal use.

e. The design owner had submitted the following picture taken from a website, which shows a racing motorcycle with a speed variator mounted externally, allegedly demonstrating that this variator is visible during normal use of the motorcycle.

However, the website was not accessible anymore and the BoA could not verify when the picture was taken or in what context. Therefore, the picture could not be taken into account as reliable and valid evidence. In any event, a single photograph, without any details regarding the context in which it was taken, was deemed insufficient to demonstrate normal use.

f. The Court concluded that the design owner only established that it is theoretically possible to mount a speed variator externally without a protective casing but not that this is normal use.

2. The design owner argued that it was sufficient that the speed variator was only partially visible during normal use in case of internal mounting. The EUIPO agreed but contended that this had no impact on the legality of the BoA’s decision because the visible parts could not be distinguished with sufficient clarity and detail in order to assess their protectability.

a. The judges held that the wording of Art. 4 CDR does not require the entire component part of the complex product being visible during normal use. Only the visible features of the component part must meet the requirements of novelty and invidual character.

This was supported by Recital 12 CDR, which states that

"Protection should not be extended to those component parts which are not visible during normal use of a product, nor to those features of such part which are not visible when the part is mounted, or which would not, in themselves, fulfil the requirements as to novelty and individual character. Therefore, those features of design which are excluded from protection for these reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection."

According to the judges, this recital clearly envisages a situation where only certain features of a component part are visible during normal use of a product and that these features may be eligible for protection, provided that they meet the requirements of novelty and individual character.

b. Therefore, it was sufficient that the speed variator was partially visible. However, this did not help the design owner to succeed because the visible part was not sufficiently clear. By referring to Ferrari (IPKat here), the judges required the component of a complex product to be visible and delimited by features that constitute its distinctive appearance, namely by lines, contours, colours, shapes or a particular texture. This presupposes that the appearance of the component is capable, in itself, of producing an overall impression and does not blend completely into the overall product.

The Court found that there is no angle from which an informed user could view the motorcycle that reveals the speed variator’s appearance in a sufficiently clear and distinct way to allow the assessment of novelty and individual character. The visible parts of the speed variator in its internal mounting position blend completely into the overall product and do not create a distinct visual impression.

Comment

In this Kat’s opinion, the question whether partial visibility of a component part can be sufficient to fulfil the visibility criterion should be denied.

It is for the design owner to clearly specify the subject matter of protection. If protection is sought for a part of the design only, the applicant should have made that clear by only representing that part and using dotted lines for the non-protected part(s). If the entire component part is shown, it must meet the conditions for design protection in its entirety, including the requirement of visibility during normal use. The General Court’s opinion makes it difficult to assess which parts of registered design are actually the subject of protection because it may be unclear – as in the case discussed above – if and which parts are visible during normal use. Legal certainty looks different.

The wording of Art. 4(2) CDR does also not preclude requiring the entire component part to be visible. To the contrary, the wording requires that “the component part, once it has been incorporated into the complex product, remains visible during normal use”. It does not say “all or part of the component part […] remains visible […]”. If you order a Pizza and the waiter only brings you a slice and says that the menu only states ‘Pizza’ but not whether it is a part or an entire Pizza, you would not be too happy, would you?

Maybe the Court of Justice of the EU gets a chance to weigh in on that issue.