Is it possible to freely customise a car to make it or part of it look like a Ferrari sports car? In a recent judgment (Case C-123/20) the Court of Justice of the European Union (CJEU) ruled that even if only a photograph of a whole product has been published, parts of it may be protected as an unregistered Community design (UCD) and thus prevent it from such “copying”.
Design means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. In simplified terms, a design is the visual appearance of a product, defined and made unique by its shape, proportions, colours, decoration, surface and other patterns.
In some sectors of industry, a large number of designs are created for products frequently having a short market life: a typical example is the fashion industry, where fashion, and thus the designs considered fashionable, change very rapidly from season to season. In such cases, obtaining protection without formal application procedures and additional costs is an advantage, as the duration of protection is less significant. On the other hand, there are sectors of industry which value the advantages of registration for the greater legal certainty it provides and which require the possibility of a longer term of protection corresponding to the foreseeable market life of their products.
This calls for two forms of protection, one being a short-term unregistered design and the other being a longer term registered design.
A registered Community design shall be valid for an initial period of five years from the date of filing, renewable every five years up to a maximum of 25 years.
An unregistered Community design is protected for three years from the date of its first publication in the European Union (EU) and it is protected only against copying. Protection shall lapse thereafter and shall not be renewed.
Decision of CJEU
Ferrari is an Italian racing car and sports car manufacturer. Its top-of-the-range FXX K model, which is produced in very limited numbers, is intended exclusively for driving on track. Ferrari first presented the FXX K model to the public in a press release dated 2 December 2014. That press release included the following two photographs, showing, respectively, a side view and a front view of the vehicle:
Mansory Design is an undertaking that specialises in the personalisation (known as ‘tuning’) of high-end cars. Since 2016, Mansory Design has produced and marketed sets of personalisation accessories designed to alter the appearance of the Ferrari 488 GTB (a road-going model) in such a way as to make it resemble the appearance of the Ferrari FXX K.
Mansory Design offers several number of packages designed to alter the appearance of the Ferrari 488 GTB, including a “front kit” that mirrors the “V” tip on the Ferrari FXX K bonnet.
Ferrari maintained that the marketing of those components by Mansory Design constitutes an infringement of the rights conferred by the unregistered Community designs of Ferrari FXX K of which it is the holder.
The German court in the infringement action has referred a question to the CJEU for a preliminary ruling, asking essentially whether Regulation (EC) No 6/2002 on Community designs should be interpreted as unregistered Community designs in individual parts of a product could arise as a result of disclosure of an overall image of a product. If so, to what extent must the appearance of a part of the product be independent of the product as a whole in order to assess the individual character of that appearance?
The CJEU has established that the unregistered Community design arises as from the date on which it was first made available to the public within the EU. The publication of photographs of a car entails the making available to the public of a design of a part of that product, provided that the appearance of that part or component part is clearly identifiable at the time the design is made available. In conclusion, even if only a photograph of the whole Ferrari model has been published, its bonnet may be protected as an unregistered Community design if it is clearly identifiable in the photograph.
A design can be protected, whether registered or not, if it is new and has individual character.
The CJEU has also emphasized in its decision that, in order to assess the above conditions for Community design protection, 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. This presupposes that the appearance of that part of the product or of that component part of the composite product is capable of creating an overall impression in itself and thus cannot be entirely integrated into the appearance of the product as a whole.
It is for the German court to decide on the substance of the case, as the CJEU has pointed out by stating that it is for the national court to determine whether the features of the designs claimed by Ferrari for the parts of the bodywork of the car concerned fulfil the abovementioned requirements for protection as an unregistered Community design.