Background

Ferrari, the famous Italian racing and sports car manufacturer, first presented its limited edition racing car, the Ferrari FXX K in a press release on 2 December 2014. The press release included the following photographs:

The car is available in two variants distinguished solely by the colour of the “V” on the bonnet. In the first version, as illustrated by the photographs above, the “V” is black apart from its tip, which is the same colour as the basic colour of the vehicle. In the second version, the “V” is entirely black in colour.

Mansory Design & Holding GmbH is a manufacturer and retailer of tuning components or “body kits” for Ferrari cars. Mansory offered 4XX tuning kits, which were designed to alter the appearance of the Ferrari 488 GTB (a road-going model) to make it resemble the appearance of the Ferrari FXX K. One of the five 4XX tuning kits included a V-shaped “front kit”, of which there were two versions reflecting the two versions of the Ferrari FXX K.

Ferrari issued proceedings against Mansory in Germany, claiming that Mansory’s “front kits” infringed its unregistered Community design rights (UCDRs) in the appearance of the front part of its FXX K model.

At first instance, the German court dismissed Ferrari’s claim. Ferrari’s appeal was also rejected on the basis that Ferrari had not shown that the minimum requirement of a “certain autonomy” and a “certain consistency of form” of the part of the vehicle making up its claimed UCDR had been satisfied. The court said that Ferrari had merely referred to an arbitrarily defined section of the car.

Ferrari appealed to the German Federal Court of Justice[1], which referred two questions to the CJEU regarding the interpretation of Article 11(2) of the Community Design Right Regulation (6/2002/EC) and the conditions necessary for the appearance of part of a product, made available to the public as part of the whole product, to enjoy protection as a UCD under the Regulation.

Decision

The CJEU noted in its decision[2] that it is the appearance of the product, whether the whole product or part of the product, that is the decisive factor when considering design right protection under the Community design right system. Further, the conditions required for protection as a Community design, whether registered or unregistered, i.e., novelty and individual character, are the same for both “products” and “parts of a product”, as set out in the definition of “design” in Article 3(a). However, when considering the appearance of component parts of a “complex product” (as defined in Article 3(c)), account must be taken of the requirements set out in Article 4(2) of the Regulation.

The CJEU said that it was for the national court to determine whether the components of the bodywork of the car constituted “parts of a product” under Article 3(a) or “component parts of a complex product” under Articles 3(c) and 4(2).

The CJEU said that for the making available to the public of the design of a product taken as a whole to amount to the making available of the design of part of that product, it is essential that the appearance of that part is clearly identifiable when the design is made available. If not, the “specialised circles” referred to in Article 11(2) cannot reasonably be deemed to have acquired knowledge of the disclosure of the part of the product concerned, as required by the same Article. In fact, according to case law, the representation of a design must make it possible for operators in the sector to identify the design clearly so that they are aware of potential third-party rights.

However, the CJEU said, that does not mean that, under Article 11(2), designers must make available each of the parts of their products separately. That would be contrary to the objective of simplicity and rapidity behind the UCDR system. Further, to impose such a requirement in the interests of legal certainty would be to disregard the balance that the EU legislature sought to achieve in the design of the UCDR system, which by its nature implies a lower level of legal certainty than that of the registered Community design system: under the UCDR system, a UCDR holder is only protected against copying, and the duration of protection is limited to three years from the date on which the design was first made available to the public.

As for the part or component of the product being clearly identifiable, the CJEU said that in this case that meant that the photographic image of the part or component of the car in question had to be clearly visible. This was so that, when assessing whether the design claimed has individual character, the national court can make comparisons between the design claimed and one or more specific, individualised, defined and identified designs from among all the designs that have been made available to the public previously. To that end, it is essential to have an image that makes it possible to visualise, precisely and with certainty, the design claimed.

As for assessing individual character under Article 6(1) (by comparing the overall impression produced by the designs in question), this must be done in the light of the overall appearance of each of the designs. As the CJEU said in Case C-345/13 Karen Millen Fashions EU:C:2014:2013, the overall impression must be different from the overall impression created not by a combination of features drawn from a number of earlier designs, but by one or more earlier designs taken individually. Therefore, the concept of individual character governs not the relationship between the design of a product and the design of its component parts, but the relationship between those designs and other earlier designs. Further, it is the features of the lines, contours, colours, shape, texture and/or materials of the “design”, as defined in Article 3(a), that must be considered.

Therefore, in order to assess the conditions for protection as a UCDR, the part of the product or component part of the complex product in question must be visible and defined by features that constitute its appearance, i.e., by its lines, contours, colours, shapes and texture. That presupposes that the appearance of that part or that component part is capable, in itself, of producing an overall impression and is not completely lost in the product as a whole.

The CJEU concluded that Article 11(2) must be interpreted as meaning that the making available to the public of images of a product, such as the publication of photographs of a car, entails the making available to the public of a design of a part of that product, within the meaning of Article 3(a), or of a component part of that product as a complex product, within the meaning of Articles 3(c) and 4(2), provided that the appearance of that part or component part is clearly identifiable at the time the design is made available. In order to be able to examine whether that appearance satisfies the condition of individual character in Article 6(1), it is necessary that the part or component part in question constitutes a visible section of the product or complex product, clearly defined by particular lines, contours, colours, shapes or texture.

It was for the national court to determine whether the features of the designs claimed by Ferrari for the parts of the bodywork of the car fulfilled all the above requirements for protection as a UCDR.

[1] 30th January 2020, court ref. I ZR 1/19 – to see our earlier article on this decision, click here

[2] Case C-123/20 Ferrari SpA v Mansory Design Holding GmbH EU:C:2021:889 (28 October 2021) — to read the judgment in full, click here).