The Court of Justice of the EU (CJEU) handed down its judgment last week in a case concerning unregistered Community designs, Ferrari and customisation kits. In summary, the CJEU ruled that:
- Making available to the public images of a product also entails the making available of a design of a part of that product, provided that the appearance of that part is clearly identifiable at the time it is made available; and
- In order to determine whether a part of a product has its own individual character (for the purposes of assessing whether unregistered Community design protection may arise), it must constitute a visible section of the product, clearly defined by particular lines, contours, colours, shapes or texture.
The case concerned an unregistered Community design in Ferrari’s FXX K model, which had been made available to the public in a press release dated 2 December 2014. Mansory Design is a company which specialises in the personalisation of high-end cars. In 2016, it released sets of ‘tuning kits’ designed to alter the appearance of the Ferrari 488 GTB to resemble the more exclusive FXX K model. Ferrari claimed infringement of a number of unregistered Community designs covering various parts of the FXX K model, which had been reproduced by the tuning kits made by Mansory Design. The German courts dismissed the claim, but on appeal referred two questions to the CJEU on the interpretation of Regulation (EC) 6/2002:
- Whether unregistered Community designs can arise in individual parts of a product as a result of the disclosure of an overall image of a product; and
- If so, how to assess whether those individual parts of a product create their own overall impression, such that they benefit from ‘individual character’.
In agreement with the Advocate General’s (AG) view (a summary of which can be found here), the CJEU concluded that Article 11(2) of Regulation (EC) 6/2002 did not require, for the purposes of ‘making available’ to the public, the individual parts of a product to be disclosed separately from the whole. In line with the existing wording of the Regulation, the CJEU confirmed that an unregistered Community design arises as from the date on which it is disclosed by events that may have reasonably become known to the circles specialised in the relevant sector. Therefore, provided an individual component of a product is visible with its design features clearly identifiable, the specialised circles are likely to acquire the requisite knowledge in relation to that part of the product specifically.
The CJEU also agreed with the AG’s determination that introducing a separate disclosure requirement for parts of a product would introduce an undesirable layer of formality into the unregistered designs regime, which is valued for its speed and simplicity. Moreover, the Court acknowledged that by imposing an additional requirement, it would deny protection to individual parts of a product that had been made available with sufficient clarity to be copied by others, who could then claim protection in their own designs by publishing them separately ‘for the first time’.
The CJEU also concurred with the AG’s answer to the second question. It decided that in order to determine whether a design of a part of a product benefits from individual character, the part or component part in question must constitute a visible section of the product, capable of definition by its particular lines, contours, colours, shapes or texture. Based on those features, the appearance of that part of the product must be capable of producing its own overall impression, independent of that of the wider design.
Practical Steps arising from the Decision
In light of the CJEU’s decision, it is advisable when launching new products to the market to ensure that publicity photos capture all significant visual aspects of the product in question. This is particularly the case in situations where it is envisaged that protection might be sought for individual parts/components of a product (such as when a product incorporates a striking new visual feature). In this way, it will be far harder for a potential infringer to argue that individual design features are not protectable, i.e. because they do not constitute a visible element of the product, or because they do not produce their own overall impression distinct from the product as a whole. Indeed, for particularly important designs, it would be prudent to publish a comprehensive selection of images of the product, which will help to ensure that protection can be claimed for individual component design features.
On a practical note, marketing teams should ensure that – in advance of any product launch – they liaise with their legal departments or external consultants, who can advise on the best way of maximising design protection. Indeed, with the benefit of hindsight, Ferrari may have wished that it had captured and published additional images of its products, which would certainly have strengthened its position in the national proceedings at hand.
Co-authored by Ben Hitchens and Omri Shirion