1. The reference for a preliminary ruling by the FCJ was preceded by a legal dispute between Ferrari SpA and Mansory Design & Holding GmbH due to the alleged infringement of rights arising from several unregistered Community designs (UCD) of Ferrari.
Ferrari first unveiled its FXX K sports car in a press release on 2 December 2014, which showed photographs of the car as follows:
(Picture shown in the newsletter)
The FXX K’s special feature is the “V”-shaped element on the front bonnet, the fin-like elements protruding centrally from the front bonnet, the two-piece front spoiler integrated into the bumper, and its central connecting bar that joins the front spoiler to the front bonnet. According to Ferrari, these elements are understood as a unit that determines the individual “facial features” of this vehicle (cf. para.18).
Mansory Design offered several tuning kits to alter the appearance of other Ferrari models to the appearance of the FXX K.
Ferrari based its claim on a total of 3 UCDs: the “V”-shaped front bonnet, in the alternative the two-layer front spoiler and further in the alternative the vehicle as a whole as disclosed in the press release in an oblique view. In addition, Ferrari asserted claims limited to Germany based on supplementary protection of intellectual property under competition law (Sec. 4 no. 3 German Act against Unfair Competition (UWG)) (para. 19 et seq.).
2. The Duesseldorf Regional Court dismissed the action in its entirety. The Duesseldorf Higher Regional Court dismissed Ferrari’s appeal on the grounds that only an UCD had arisen in the sports car published by the press release as an overall product, but that this was not infringed by the distribution of the tuning kits in dispute by Mansory Design (para. 24).
3. In the appeal proceedings, the FCJ referred the following questions to the CJEU by way of a preliminary ruling under Article 267 TFEU (para. 28):
(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 (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) CDR 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?’.
4. In its decision of 28 October 2021, the CJEU first states in general terms (para. 31) that the objective of the CDR is, inter alia, to introduce a design which confers protection in all member states of the EU and thereby leads to innovation and the development of new products and encourages investment in the manufacture of such products (para. 31). Furthermore, by introducing the UCD, the EU legislature had intended to promote innovation in designs specifically for products which have only a short life on the market and for which their designers desire rapid and effective protection without registration formalities, and for which the duration of protection is of lesser significance (para. 32).
5. The material conditions required for the protection of a Community design, whether registered or not, 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 (para. 33). These are (i) visibility during normal use and (ii) novelty and individual character of the visible features of the component part itself.
6. With regard to the formal condition for giving rise to an UCD, the CJEU states (para. 36) that, according to Article 11(2) CDR, a design has to be published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the EU.
7. Against this background, the CJEU concludes that, in order for an UCD to arise in respect of a part of a product disclosed in its entirety, it is first essential that the appearance of that part be clearly identifiable when the design is made available. If not, the specialised circles cannot reasonably acquire the knowledge required as regards the part of the product concerned (para. 38). However, it was not necessary for the requirement concerning the ability to identify the subject matter of the protection to disclose each individual part of a product separately. Such an obligation would be contrary to the objective of simplicity and rapidity which justified the establishment of the UCD (para. 40).
8. However, the CJEU held that, in order to review the specific character of the UCD, it was necessary that the part of a product or the component part of a complex product at issue must be visible and defined by features which constitute its particular appearance, namely by particular lines, contours, colours, shapes and texture. According to the CJEU, this presupposes that the appearance of that part of a product or of that component part of a complex product is capable, in itself, of producing an overall impression and cannot be completely lost in the product as a whole (para. 50).
9. Against this background, the CJEU answers the questions posed by the FCJ as follows:
(1) 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) CDR, or of a component part of that product, as a complex product, within the meaning of Article 3(c) and Article 4(2) CDR, provided that the appearance of that part or component part is clearly identifiable at the time the design is made available.
(2) In order for it to be possible to examine whether that appearance satisfies the condition of individual character referred to in Article 6(1) CDR, 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, colours, shapes or texture.
10. The CJEU’s decision provides new guidelines for the assessment of UCDs and significantly strengthens their importance. In future, it will be possible to derive rights from an UCD also for individual parts of an overall product. It is important that the corresponding element is clearly recognisable and visible and is not lost in the appearance of the overall product.
