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.

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