Ferrari vs. Mansory – Important ruling by CJEU on design protection of parts of a product
In one of the CJEU’s latest decision, Ferrari SpA vs. Mansory Design & Holding GmbH (C-123/20) the CJEU has confirmed it is possible to obtain design protection for parts of products based on published images of the whole product by way of Unregistered Community Design (UCD). In order to rely on such UCD for parts of a product, it is not necessary to publish the parts of a product separately; a major benefit to right owners who will usually first market their products as a whole.
At the Geneva Motor Show in 2016 a manufacturer of tuning components for Ferrari cars presented a converted Ferrari 488 GTB under the designation “Mansory Siracusa 4XX”, in which a V-shaped add-on front kit and a front lip spoiler was used. Ferrari considered that the V-shaped add-on front kit infringed its Unregistered Community Design (UCD) rights in its earlier designs. [In contrast to a Registered Community Design (RCD), a UCD is not registered with the EUIPO. A design will only be protected by a UCD if it meets the requirements under Section 1 of the CDR, which means especially that – like a RCD – the UCD needs to meet the requirements of novelty and individual character on the day it is first made available to the public within the Community.]
Ferrari sued Mansory in Germany. The Court of first instance held that the V-shaped add-on front kit was not protected by a UCD in favour of Ferrari, since Ferrari had not shown that the minimum requirement of a certain autonomy and consistency of form. Rather, the V-shaped add-on front kit was a part of the vehicle and so not entitled to protection in its own right. For the same reason, the front lip spoiler did not constitute an UCD.
the decision was appealed and reached the German Federal Court of Justice, which referred the case to the CJEU. The Federal Court asked the CJEU whether the disclosure of an overall representation of a product can give rise to UCD rights in respect of individual component parts of a more complex product.
In this regard it is noteworthy, that in contrast to the CDR the German Design Act only recognizes registered designs, but not unregistered designs. While it is – like on EU level – possible to seek protection not only for the design of a whole product, but also for its component parts by way of registration of the design of the component part, German courts have never recognized the possibility of additional derived partial protection i.e., individual protection of a part of a registered design for the whole product by virtue of the registered design for the whole product. In other words: If a part of a product should be protected itself, a corresponding design would need to be registered. The design registered for the whole product will only protect the overall impression conveyed by the whole product in its entirety. The main argument for this approach is that legal certainty requires to protect appearances of parts of a product as registered designs if they are registered as such. Only in this way it reliably can be determined what is actually protected. The CJEU’s answer
The CJEU answered with a clear “yes”. The disclosure of an overall representation of a product may give rise to UCDs in respect of individual component parts of the product.
Novelty and individual character
The CJEU clarified that for protection of a Community design to arise, whether registered or not, are the same for both products and parts of a product. In general, a design is new if no identical design has been made available to the public and it has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public. In the case of an UCD both conditions must be met before the date on which the design for which protection is claimed has first been made available to the public.
Hence, if an individual part of a product is new and has individual character, it can be protected by a UCD. The CJEU points out that here is no obligation for designers to make available each of the parts of their products separately to benefit from UCDs in those parts. Such an obligation would be contrary to the objective of simplicity and rapidity which, justified the establishment of the UCD.
Clearly identifiability of the component part
However, it is essential that the appearance of that part in which rights are claimed is clearly identifiable when the design is made available to the public. It must be possible to visualise, precisely and with certainty, the design claimed.
Consequences of this judgment
This judgment has been long awaited by car manufacturers, but will benefit designers in many sectors and highlights the usefulness of UCDs in protecting more complex products. The lack of requirement to publish parts of a product separately in order to claim protection for them through a UCD will save time and costs.
However, manufacturers who wish to rely on such UCD protection for a part of their product should make sure that the relevant part is clearly identifiable when the product is made available. It must be possible to visualise, precisely and with certainty, the design claimed. Whilst UCDs are very useful, manufacturers might still consider registering the key parts of their products given the significantly longer length of protection for RCDs of up to 25 years rather than 3 years for UCDs.