Ferrari succeeds on the basis of unregistered designs

Following a request for a preliminary ruling by the German Federal Court of Justice (BGH) on January 30, 2020 the European Court of Justice (ECJ) ruled on when unregistered designs of individual parts enter into force in the event of disclosure of the overall product.

I. Facts of the case and background information

Ferrari is an Italian automobile manufacturer of luxury sports cars and Formula 1 vehicles. Mansory Design & Holding GmbH (Mansory Design) is a manufacturer of technical exclusive car equipment - mainly for luxury car brands and specializes in the development and distribution of tuning products and accessories.

In the year 2014 Ferrari had launched the FXXK sports car. A costly racing car that is not approved for road traffic in a limited edition at a price of 2.2 million Euros. The special feature is the eye-catching design of its front hood. This is characterized above all by a ”V”-shaped element curving downwards at the front, a fin-like element protruding centrally from this element and a two-layer front spoiler. Ferrari first unveiled its FXX K sports car in a press release on December 2, 2014 featuring the following photographs of the vehicle:

Mansory Design manufactured comparable tuning front components that mirrored the overall impression of the FXX K sports car by Ferrari. Ferrari claimed that the marketing of those components by Mansory Design constitutes an infringement of the rights conferred by one or more unregistered Community designs of which it is the holder.

In its infringement action Ferrari asseted the infringement of the rights arising from several unregistered Community designs (UCDs). The action was based on three unregistered UCDs: the "V"-shaped front bonnet, alternatively the two-layer front spoiler and as a third alternative based on the vehicle as a whole as disclosed in the press release. In addition, Ferrari asserted claims limited to Germany based on supplementary protection of intellectual property under German competition law (§ 4 no. 3 UWG).

The Regional Court of Duesseldorf dismissed the action in its entirety. In the next instance, thef Higher Regional Court of Düsseldorf dismissed Ferrari's appeal on the grounds that only an unregistered UCD had arisen on the sports car published by the press release as an overall product, but, that this had not been infringed by the distribution of the tuning kits in dispute by Mansory Design.

The BGH submitted a request for a preliminary ruling under Article 267 TFEU (Treaty on the Functioning of the European Union) to the ECJ.

II. The issue and legal questions relating to unregistered designs

In the revision procedure the BGH had to deal with the question whether the making available to the public of the image of a product in its entirety also amounts to the making available of the designs of the parts of that product. In principle, the issue is whether unregistered Community designs can arise on individual parts of a product by way of disclosure of an overall representation of the product und if so, which legal standards have to be applied when determining the requirements for protection of these parts or elements.

The BGH submitted the following questions to the ECJ as a request for a preliminary ruling under Article 267 TFEU:

(1)      Can unregistered Community designs in individual parts of a product arise as a result of disclosure of an overall image of a product in accordance with Article 11(1) and the first sentence of Article 11(2) of Regulation No 6/2002 (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs- CDR) ?

(2)      If Question 1 is answered in the affirmative:

What legal criterion is to be applied for the purpose of assessing individual character in accordance with Article 4(2)(b) and Article 6(1) of Regulation [No 6/2002] when determining the overall impression of a component part which – as in the case of a part of a vehicle’s bodywork, for example – is to be incorporated into a complex product? In particular, can the criterion be whether the appearance of the component part, as viewed by an informed user, is not completely lost in the appearance of the complex product, but rather displays a certain autonomy and consistency of form such that it is possible to identify an aesthetic overall impression which is independent of the overall form?

III. Legal starting point
Within the European Union designs can be protected and commercialized without registration on the basis of a so-called unregistered Community design (UCD) right.
An UCD is given protection for a period of three years from the date on which the design was first made available to the public within the territory of the European Union. There is no extension of the protection after three years. The act of making available to the public is called ‘disclosure'.

The wording of the Design Regulation abstains from the question whether the protection of the (registered or unregistered) design of a product in its entity automatically includes the isolated protection of its parts or elements.

Pursuant to Article 2 (a) of the CDR a design is protected by an "unregistered Community design", if made available to the public.

The substantive requirements for obtaining design protection in the EU - registered or unregistered -  i.e. novelty and individual character, are the same for products and their parts. For the protection of the appearance of a component part of a complex product, the requirements set out in Art. 4(2) CDR must also be observed. These are visibility when used as intended and novelty and individual character of the visible features of the component part itself.

Pursuant to Art. 11(1) and (2) CDR, protection arises if the design, which in particular meets the requirements of Art. 4 CDR, has been made available to the public within the EU, i.e. if it has been made known, exhibited, used in trade or otherwise disclosed in such a way that it could be known in

However, on the basis of the wording of the CDR the initial question cannot be clarified, so that it was in need of interpretation.

IV. The decision of the ECJ

The ECJ ruled that Article 11(2) CDR 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) of that regulation, or of a component part of that product, as a complex product, within the meaning of Article 3(c) and Article 4(2) of that regulation, provided that the appearance of that part or component part is clearly identifiable at the time the design is made available. In order for it to be possible to examine whether that appearance satisfies the condition of individual character referred to in Article 6(1) of that regulation, it is necessary that the part or component part in question constitute a visible section of the product or complex product, clearly defined by particular lines, contours, colors, shapes or texture

The ECJ answered the submitted question of the BGH in the affirmative and stated that a design on a part of this product or on a component part of this product as a complex product is made available to the public if illustrations of a product are made available to the public. Thus, by making the images of a product available to the public, designs can be created on the entire product as well as on parts or components without the latter having to be disclosed separately. Further, the ECJ stated that protection arises on condition that the part or component in question represents a visible part of the product or complex product, clearly delimited by lines, contours, colors, shape or a particular surface structure. This requires that the appearance of this part or this structural element of a complex product must be capable of itself creating an overall impression and not be completely lost in the overall product.

V. Conclusion

The Court recognizes that the disclosure of an overall product may give rise to a plurality of unregistered designs in individual sections of the overall product. Contrary to what has been assumed by German case law so far, neither an independent act of disclosure in relation to the respective sub-component is necessary, nor does the sub-component have to show a certain independence and unity of form. In this understanding designers are not required to make available separately each of the parts of their products in respect of which they wish to benefit from unregistered Community design protection. The decision of the ECJ opens up flexible ways and provides broader protection of unregistered design rights and also individual parts.

For more information and the case law cited in this blog article please be referred to the court judgements in German and English:

LG Düsseldorf, Entscheidung vom 20.07.2017 - 14c O 137/16 -

OLG Düsseldorf, Entscheidung vom 06.12.2018 - I-20 U 124/17

BGH, Urteil vom 10. März 2022 - I ZR 1/19

EuGH, Urteil vom 29.10.2021 - C‑123/20