Ferrari win moves dial for European design rights

Germany’s Supreme Court has refined CJEU rules on community designs after a dispute involving a $2.6 million supercar.

In a win for Ferrari, the German Federal Supreme Court has confirmed and refined standards in a case centring on unregistered community designs held by the luxury car manufacturer— reversing an earlier ruling of non-infringement.

The court handed down its  decision, upending a ruling by a Dusseldorf court, yesterday, June 28.

The long-running dispute emerged in 2018 when the Italian racing and sports cars company sued  Mansory Design, a company specialising in the personalisation (known as “tuning”) of high-end cars, for infringement of several designs.

Over the past six years, Mansory Design has distributed tuning kits for the  Ferrari 488 GTB, a road-going car produced in unlimited numbers, to make it look like the  Ferrari FXX K.

Ferrari claimed in its lawsuit that marketing those tuning kits constitutes an infringement of its unregistered community designs covering the appearance of certain elements of the FXX K bodywork.

The court of first instance in Germany dismissed Ferrari’s claims, finding that the first and second unregistered community designs claimed were non-existent, “lacking the minimum requirement of a certain autonomy and a certain consistency of form, and merely referred to a section of the vehicle arbitrarily defined by Ferrari”.

This decision was later affirmed by a German court of appeal in Düsseldorf.

CJEU wades in

Ferrari then filed an appeal before the German Federal Supreme court, which then referred the case to the  Court of Justice of the European Union (CJEU).

Earlier this year, the CJEU found that  publishing images of the overall products is sufficient to give rise to an unregistered community design on its portion, provided that the features of the part or component of that product in respect of which the design at issue is claimed are clearly visible.

“The CJEU set legal standards on how to establish design protection for a part of the product where only the entire product was disclosed,” explained Henning Hartwig, partner at  Bardehle Pagenberg.

Consequently, on the back of this judgment, the German Federal Supreme Court this week confirmed and refined the CJEU's criteria, finding that no “certain autonomy and consistency of form” is required for a part of the product to meet the CJEU's standards.

“Rather, it is [now] sufficient that the appearance of the part of the product is ‘clearly identifiable’ and ‘capable, in itself, of producing an overall impression and cannot be completely lost in the product as a whole’,” added Hartwig.

The Supreme Court stated that: “On appeal by the plaintiff, the judgment…of the Higher Regional Court of December 6, 2018, is reversed, with the rest of the appeal being rejected in terms of costs and insofar as with regard to the applications for information and assessment of damages based on the community design disadvantage has been identified.”

Back to Düsseldorf

This means that the case will now have to be considered once again by the lower court in Düsseldorf.

“As the Düsseldorf appeal court denied Ferrari's claims based on the “certain autonomy and consistency of form” test, which the Supreme Court found obsolete, the underlying decision was reversed and the matter remanded,” Hartwig explained.

It remains to be seen how the case will develop and conclude following the refining of the standards governing unregistered community designs.

As Hartwig noted: “The outcome should be of interest both for right owners and potential infringers being active in the EU.

“All will depend on how the lower instance court will apply the guidance from the CJEU and the German Supreme Court to the facts at hand, finding whether Ferrari's front kit is not ‘completely lost’ in the Ferrari FXX K.”