Wednesday 24 November 2021

Ferrari wins the race for Unregistered Community Design protection at the Court of Justice

The Court nevertheless set out a number of conditions, in that the appearance of the part must be ‘identifiable’ and thus ‘clearly visible’.

On 28
October 2021, the Court of Justice of the European Union issued its
highly-anticipated ruling in the case ‘Ferrari v. Mansory’ relating to the
protection conferred by an Unregistered Community Design (C-123/20).
The Court held that upon publication of an image of the whole product, parts of
the product may also become protected by an Unregistered Community Design when certain
conditions are fulfilled.

Factual background

In December 2014, Italian sports car manufacturer
Ferrari S.p.A. (‘Ferrari’) presented its exclusive track-focused FXX-K model to
the public in a press release. The press release contained several photographs
(including the image above) showing the FXX-K car entailing a V-shaped bonnet
connected with an front spoiler.

Mansory Design & Holding GmbH
(‘Mansory’) is a German car tuning company that specialises in the
personalisation of high-end exclusive car brands, such as Ferrari. Mansory manufactures
so-called “tuning kits” to modify cars to the customer’s personal preference.

After Ferrari’s press release, Mansory
started manufacturing tuning kits consisting of the V-shaped bonnet connected with
an front spoiler for the Ferrari 488 GTB, a road-legal car that sits at a
significantly lower price point. The tuning kit intended to make the 488 GTB
resemble the looks of the – much more expensive and exclusive – FXX-K track
car.

German Decisions and referral

Ferrari responded by starting injunction
proceedings against Mansory based on Unregistered Community Design rights in
the V-shaped bonnet and connected front spoiler. Both the first instance and
appeal Court of Düsseldorf (Germany) dismissed the claim on the basis that Ferrari’s
alleged Unregistered Community Design right lacked certain autonomy and consistency of form’ to be valid. Ferrari
brought the case before the ‘Bundesgerichtshof’, the German Supreme Court, that
referred the matter to the Court of Justice in Luxemburg for a preliminary
ruling.

Decision of the Court of Justice

The Court of Justice, following the opinion
of its Advocate General, decided that parts of a wholly publicly disclosed
product may indeed be protected as an Unregistered Community Design. This means
that there is no obligation for designers to make each of the parts of their
products separately available in respect to which they seek to benefit from Unregistered
Community Design protection. Such requirement would be contrary to the
objectives of simplicity and rapidity which justified the establishment of the Unregistered
Community Design in the first place.

The Court nevertheless set out a number of conditions,
in that the appearance of the part must be identifiable’
and thus ‘clearly visible’, and defined by features which constitute its
particular appearance, namely by particular lines, contours, colours, shapes
and texture. Its appearance must be capable of producing in itself an “overall
impression” and cannot be lost in the overall impression produced by the
product as a whole.

It is important to note that the Court of
Justice considers its findings applicable not only to component parts of
complex products – where visibility is legally required under Regulation 6/2002
– but also to parts of a product in general.

Conclusion and key
takeaways

Unregistered Community Designs are a swift and
effective means to protect designs applied to or incorporated in products with
a short market life and where the mere protection against copying suffices. When
designers wish to obtain protection without having the administrative burden of
registration formalities, and the shorter protection duration of (only) three
years is of less importance, Unregistered Community Designs offer an adequate solution.
By clarifying the protection requirements of Unregistered Community Designs,
the decision of the Court of Justice implies a significant victory not only for
Ferrari, but by extension for Unregistered Community Design owners in general.

The case has now been referred back to the German
court, which will decide accordingly on the merits of the case. It remains to
be seen whether the parts of the FXX-K will qualify as Unregistered Community
Designs, and will meet the required ‘clear visibility’ condition. However, even
if they do, the protection of the alleged Unregistered Community Designs has
lapsed three years after the first disclosure to the public – which was already
in December 2017.

Finally, as a guideline and notwithstanding
the decision, in practice, it will most often remain advisable to disclose detailed
images of parts of a new product to increase the chances of them receiving protection
as Unregistered Community Designs. Or even to register them as a Registered
Community Design with a protection duration of 25 years.