On October 28, 2021, the Court of Justice of the European Union (the CJEU) delivered a preliminary ruling that can have significant implications for the protection of unregistered community designs.
The preliminary ruling concerned a dispute between Ferrari SA, an Italian racing and sports car manufacturer, and Mansory Design & Holding GmbH, a German undertaking that provides services of personalisation of high-end cars, concerning the infringement of certain unregistered community designs.
In its judgment, the CJEU found that parts or components of a product that has been wholly disclosed to the public may enjoy protection as unregistered community designs without it being necessary for each individual part or component to be made public separately, provided that such parts are clearly identifiable in the publication of the whole product.
The facts of the case concern certain distinct features of the bodywork of Ferrari’s FXX K model, which Ferrari claimed to be unregistered community designs. The FXX K was limitedly produced for racetrack use only and was first made public by a press release on December 2, 2014. What happened was that in 2016, Mansory Design started distributing so-called ‘tuning kits’ to remodel the design of the Ferrari 448 GTB model, a model produced for road use, to look more similar to the FXX K.
Ferrari sued Mansory Design for selling and providing these ‘tuning kits’, claiming that in doing so, Mansory Design was infringing one or more unregistered community designs of very distinct elements of the FXX K, which right subsists on the basis of the public disclosure of the whole design on December 2, 2014.
In its claims, Ferrari relied on two main distinguishing elements of the car as unregistered community designs, namely:
• The ‘V-shaped’ element found on the bonnet, the front spoiler integrated into the bumper and the part connecting the front spoiler to the bonnet of the FXX K; and
• The appearance of the front spoiler, or alternatively, for the presentation of the Ferrari FXX K as a whole, as revealed in a particular photograph of the car that was published with the press release.
The part for which protection is sought must be clearly identifiable and visible
Noteworthy is that these elements of the FXX K had been disclosed to the public in that 2014 press release, on which ground Ferrari is claiming that such particular components of the model be considered as unregistered community designs. However, both the German courts at first instance and on appeal, found that unregistered community designs did not exist and so Ferrari lost its claims.
Consequently, Ferrari filed another appeal on a point of law before the German Federal Court of Justice (referred to here as the ‘referring court’ or ‘German court’), which decided to stay proceedings and refer two questions to the CJEU on the interpretation of Council Regulation (EC) No. 6/2002 on Community Designs. The questions concerned:
• Whether in terms of article 11(2) of the regulation, the public disclosure of overall images of a product would lead to the creation of unregistered community designs based on the fact that part or a component of that product was made available to the public; and if so,
• Which legal criterion is to be applied when analysing the ‘individual character’ of the part of a product (defined under article 3(a) of the regulation) or of a component part of a complex product (defined under articles 3(c) and 4(2) of the regulation) when determining the overall impression of said part or component incorporated in the product, in terms of articles 4(2)(b) and 6(1) of the regulation.
Regarding the first question, the CJEU agreed with Advocate General Henrik Saugmandsgaard Øe’s view as it initially pointed out that in terms of article 1(2)(a) of the regulation, an unregistered community design arises as from the date it was first made available to the public in the EU, in line with the procedure outlined under article 11(2) of the regulation.
Consequently, the CJEU interpreted article 11(2) in a way that states that a design is considered to have been “made available” when communicated to the public in a manner through which it may “reasonably have become known to the circles specialised” in the sector of business concerned and operating within the EU.
Furthermore, in order for the publication of a whole product to lead to the protection of part of that product, the CJEU held that an essential criterion for the part of the product in question to be warranted protection as an unregistered community design, is that it must be “clearly identifiable” as the subject matter of the protection when the product is made available.
However, the CJEU further noted that this criterion does not imply a further obligation on the part of designers to make each part of a product they want protected to be made available separately from the whole or other parts of the product.
In line with the reasoning of the advocate general, imposing such an obligation would go contrary to the “objective of simplicity and rapidity which... justified the establishment of the unregistered community design”, which would consequently result in overlooking the main objective of the protection of unregistered community design. The latter inherently “implies a reduction in the level of legal certainty by comparison with the certainty resulting from registered community designs”.
Therefore, the CJEU noted that article 11(2) must be interpreted as meaning that designers are not required to make each part or component of their products that they would like to benefit from protection as unregistered community designs, separately available from the rest of the parts or the whole of the product. This is so provided that when the whole product is made publicly available, the features of the parts or components to be warranted said protection must be made “clearly identifiable” and hence “clearly visible”.
In relation to the second question posed by the referring court, the CJEU delved into the concept of ‘individual character’ within the meaning of article 6 of the regulation. Following the advocate general’s reasoning, it held that as a concept, it determines the relationship between the designs of the component parts of the product and earlier designs.
To this end, the CJEU went on to interpret the term ‘design’, which as per article 3(a) of the regulation refers to particular features such as “the lines, contours, colours, shape, texture and/or materials”.
Moreover, since a definition of the term ‘part of a product’ is lacking in the regulation, it must be interpreted in terms of common parlance, that is, that it merely refers to “a section of the whole that is the product” which may be afforded protection as an unregistered community design only if it is clearly visible and identifiable from the publication of the whole product. The same applies with regards to “a component part of a complex product” in terms of article 4(2) of the regulation.
Kyra Pullicino is a Master of Advocacy student.