1 November 2021

Ferrari wins key design case against ‘tuning’ kits

The Court of Justice of the European Union (CJEU) has, for the first time, held that individual parts of a whole product which have been disclosed to the public may be protected as unregistered Community designs.

The Fifth Chamber of the EU’s highest court delivered its decision in proceedings brought by Ferrari on Thursday, October 28.

Speaking to WIPR, Margherita Banfi, senior associate in IP in Allen & Overy’s Milan office, said that Thursday’s decision represents the first instance in which the CJEU has ruled on the circumstances whereby part of a product may be protected as an unregistered Community design.

Banfi described the decision as “welcome news to rights owners”.

Ferrari had accused German company Mansory Design, which specialises in the personalisation of high-end cars, of violating its unregistered Community designs relating to the Ferrari FXX K. The FXX K is a research and development vehicle based on Ferrari’s first hybrid sportscar.

Press release images

The Italian sportscar manufacturer first presented the track car to the public in 2014 via a press release that included images of the FXX K from different angles.

In 2016, Mansory Design started distributing tuning kits intended to transform the appearance of the Ferrari 448 GTB so that it resembles the FXX K. The 448 GTB is a road-going model which has been available since 2015.

In proceedings brought in Germany, Ferrari claimed that the marketing of the tuning kits offered by Mansory Design infringed the rights inferred by unregistered Community designs covering the FXX K.

The sportscar manufacturer first sought to rely on the design elements of the front of the vehicle, those being the V-shaped element of the FXX K’s bonnet, its protruding fin-like element, and the integration of the front spoiler into the bumper via a vertical bridge.

Alternatively, Ferrari sought to rely on a second unregistered Community design for the appearance of the front spoiler.

As a further alternative, Ferrari relied on a third unregistered Community design covering the presentation of the FXX K as a whole.

Ferrari sought an injunction to prevent the manufacture, marketing, sale, and use of the vehicle personalisation kits at issue, as well as financial compensation and the destruction of the tuning kits.

However, Ferrari was unsuccessful, both at first instance at the Landgericht Düsseldorf (Regional Court, Düsseldorf), and on appeal to the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf).

The German courts held that the first and second unregistered Community designs relied upon did not exist, as the subject matters lacked the requirements of autonomy and consistency of form.

The third unregistered Community design relied upon, of the entire FXX K, was valid but had not been infringed by Mansory Design.

Ferrari appealed again, this time to the Bundesgerichtshof (German Federal Supreme Court), and the Bundesgerichtshof referred the matter to the CJEU.

CJEU case

The Bundesgerichtshof asked the CJEU whether making an image of the design of an entire product available to the public also amounts to making available the designs of the parts of that product.

If so, the Bundesgerichtshof further asked whether it was necessary for a part of the product to have autonomy and consistency of form separate to that of the overall product for it to constitute a separate design.

On Thursday, November 28, the CJEU answered the first question in the affirmative. The requirement to identify the subject matter of the unregistered Community design being disclosed does not require creators to separately make each of the parts of their products available to the public.

Therefore, making an overall design available to the public can constitute making the design of the parts of that product available—but “it is essential that the appearance of that part is clearly identifiable when the design is made available”, the CJEU said.

In relation to the Bundesgerichtshof’s second question, the CJEU referred to Article 3(a), Article 3(c), and Article 4(2) of Council Regulation (EC) number 6/2002 regarding the statutory definition of designs and confirmed that any protection claimed by way of unregistered Community design for a part of a product must satisfy the Regulation.

“The part of the product or component part of the 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,” the CJEU held.

Therefore, any part of the product claiming protection by way of an unregistered Community design needs to have autonomy and consistency of form. It cannot be lost in the overall appearance of the product but should rather present an autonomous impression on its own.

“It is for the referring court to determine whether the components of the bodywork of the car at issue in the main proceedings constitute ‘parts of a product’,” the CJEU said. It added that it also falls to the Bundesgerichtshof to determine the matter of costs.

The case will now return to Germany, where the Bundesgerichtshof will need to ascertain whether the parts of Ferrari’s FXX K claimed as unregistered Community designs do meet the requirements to be afforded this protection.

Notably, an unregistered Community design lasts for just three years after it is first disclosed to the public—meaning that if the parts of Ferrari’s FXX K are deemed to have enjoyed the protection of an unregistered Community design, that protection expired in 2017.

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