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1st March 2021
The EU provides unregistered design right protection not just for complete products, but also for parts of a product. But does every part of a product automatically get such protection against copying?
On March 4, 2020, in Case C123/20 – Ferrari SpA v Mansory Design & Holding GmbH – the German Federal Supreme Court (Bundesgerichtshof) referred two questions to the Court of Justice of the European Union (CJEU) which may lead us to a better understanding of this question.
The answers that the Court eventually gives to these questions could also influence how manufacturers and design owners maximise the unregistered protection that exists for the designs of parts of their products.
The referral comes from a dispute in which Ferrari sued Mansory Design for infringement of unregistered Community design right (UCDR). Mansory sells body kits that are designed to transform the appearance of a €170k Ferrari 488 so that it resembles its €2.2 million cousin, the Ferrari FXX K supercar.
Ferrari responded by alleging that sales of these body kits infringed unregistered design right in respect of particular parts of the FXX K supercar design.
The designs relied on by Ferrari were defined to include specific portions of the FXX K design such as a V-shaped section of bonnet in combination with part of the front spoiler and bumper (see image below).
Alleged infringement with Ferrari’s claimed design outlined in red
Ferrari lost at both first instance and on its initial appeal from that decision. The German courts ruled that no UCDR existed because (1) the claimed designs had not been originally disclosed or identified separately from the overall design; and (2) the designs were arbitrarily defined sections of the overall design and did not have autonomy.
The German Federal Supreme Court, which appears inclined to agree with the lower courts, referred the following two questions to the CJEU:
1. Can unregistered Community designs in individual parts of a product arise as a result of disclosure of an overall image of a product […]?
2. If Question 1 is answered in the affirmative:
What legal criterion is to be applied for the purpose of assessing individual character […] 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?
In proposing the first question, the German court suggests that UCDR for part of a product should only exist if that part was disclosed on its own, or explicitly indicated within an image of the entire product.
If the CJEU follows this view, design owners may need to rethink their strategy at the time of first disclosure. For example, a company may need to make separate explicit disclosures of different parts of the product in order to prevent others from partial copying at a later date.
The second question relates to the protectability of component parts which are integrated into an overall product’s design, which also has potential implications for the validity of many thousands of registered designs already in existence for such parts. Conceivably, the CJEU could answer this question in a way that throws doubt on the validity of any part of a design that does not have its own “autonomous” appearance that is independent of the overall product’s appearance.
Until that decision issues, the best advice is to use the registered design system to explicitly gain protection for the parts of a product you want to protect against imitation. The ability to include multiple designs for different parts of a product in a single application means that one can get protection for each part of the design regardless of whether other parts of a competing product look the same or different.
This article by FRKelly’s David Brophy was first published by the International Trademark Association on www.inta.org and is published here in slightly edited form.
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