This limitation aims to exclude concealed components, such as internal vehicle parts, typically relevant as repair or replacement parts. But what happens when a design is invisible during normal use of one product for which it is registered, yet visible for another? A recent decision of the Bundespatentgericht (also known as the BPatG or in English the German Federal Patent Court or FPC) suggests that the design may nevertheless remain protected.

Background of the dispute

The case concerns German design No. 40 2011 004 383-0001, owned by German company Monz and registered for “saddles for bicycles or motorbikes”. The design consists of a single representation showing the underside of a saddle. The invalidity applicant sought invalidation, arguing that the underside is not visible during normal use and is therefore excluded from protection under Article 3(3)(a) of the EU Design Directive (EUDD).

The dispute has a long history, having reached the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office - DPMA), on appeal at the Bundespatentgericht, the German Supreme Court and then the Court of Justice of the European Union (CJEU).

After the Bundespatentgericht initially declared the design invalid, the German Supreme Court referred questions to the CJEU concerning the interpretation of “visibility” and “normal use”. The CJEU held that normal use must be interpreted broadly and is not limited to a product’s principal function or manufacturer-prescribed use. It may also include storage and transportation. Furthermore, visibility must be assessed from the perspectives of both end users and a new created external observers.

On remittal, the Bundespatentgericht found the design valid.

The Bundespatentgericht’s latest decision 

Under Section 39 of the German Design Act, a registered design benefits from a presumption of validity. The invalidity applicant therefore had to establish that the design was not visible during normal use. The Bundespatentgericht found that this burden had not been met.

Regarding bicycles, the court held that the underside of a saddle can be visible during normal use, which extends beyond riding. Relevant situations include carrying a bicycle over uneven terrain, transporting a folding bicycle, storing it in an elevated position, or transporting it on a car roof or in a trunk.

The court also rejected the argument that mounting hardware, such as rails, clamps and brackets, sufficiently obscures the design. These components do not prevent the underside from being viewed from angles encountered during normal use.

For motorbikes, the court accepted that the underside of a saddle would generally not be visible during normal use. Their greater size and weight make situations exposing the saddle’s underside during handling, storage or transportation less likely.

Nevertheless, the Bundespatentgericht held that this did not invalidate the design and argued that Article 3(3)(a) EUDD applies only where the design remains invisible in all situations falling within normal use. If a component is intended for different complex products and is visible during normal use of at least one of them, it may remain eligible for protection.

The court further considered the product indication a non-binding aid to interpretation. Although it does not determine the scope of protection, it can help identify the product and inform the visibility assessment.

Why this decision matters

The Bundespatentgericht’s approach focuses on the design’s appearance while recognising that visibility must be assessed in the context of normal use, as clarified by the CJEU.

The decision avoids making design validity dependent on the particular circumstances in which a product is used, stored or transported. A stricter approach could create uncertainty and complicate assessments of protectability at the registration stage.

Ultimately, the decision suggests that where a design covers components intended for different complex products, invisibility in relation to one product may not be fatal if the design remains visible during normal use of another. This interpretation could have important implications for designs registered across multiple product types.

Case details at a glance

Jurisdiction: Germany
Decision level: Bundespatentgericht
Parties: Monz Handelsgesellschaft International mbH & Co KG v Büchel GmbH & Co Fahrzeugtechnik KG
Date: 26 March 2026
Citation: 30 W (pat) 802/23
Decision: https://dycip.com/30-w-pat-802-23