In a press release in December 2014, Ferrari first presented its top-of-the-range FXX K model (intended exclusively for track driving) to the public. The press release included the below two photographs, showing, respectively, a side view and a front view:
In 2016, Mansory Design, the defendant, started distributing tuning kits intended to transform the appearance of the Ferrari 448 GTB (a road-going model) so that it resembled the FXX K. Ferrari began proceedings in Germany against Mansory Design alleging that the defendant was infringing three unregistered Community designs (UCDs) covering its FXX K model, namely:
1. A UCD relating to the appearance of the front ‘facial features’ of the vehicle including the V-shaped element on the bonnet, the protruding fin, and the spoiler integrated into the bumper;
2. A UCD relating to the appearance of the front lip spoiler: and
3. A UCD concerning the presentation of the Ferrari FXX K as a whole.
Just a quick reminder of the law: the formal condition giving rise to a UCD is that of making available the design to the public under the detailed rules laid down in Article 11(2) of the Community Designs Regulation (6/2002/EC) (CDR). A design is to be deemed to have been made available to the public within the EU "if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the [EU]".
Ferrari submitted that its publication of a number of overall views of its FXX K model amounted to the "making available" of the claimed UCDs for the above elements of its bodywork.
Decisions of the German courts
The Regional Court and then Higher Regional Court in Düsseldorf rejected Ferrari's claims. They found that the first and second UCDs did not exist as the subject matter lacked the required autonomy and consistency of form. The third UCD did exist, but the courts found it had not been infringed by Mansory Design.
Ferrari appealed to the Bundesgerichtshof (German Federal Court of Justice) who decided to stay the proceedings and send a reference to the CJEU for a preliminary ruling.
In summary, the German court asked the CJEU to rule on:
- Whether UCDs in individual parts of a product can arise as a result of disclosure of an overall image of a product (under Article 11(2) of the CDR)?
- If so, what legal criterion applies in assessing individual character when determining the overall impression of a component part (eg part of a vehicle's bodywork) to be incorporated into a complex product, including whether it is relevant that the appearance of the component part displays a certain autonomy and consistency of form?
In its judgment the CJEU, following the opinion of the Advocate General, answered the first question in the affirmative. It commented that to require designers to make available separately each of the parts of their products in which they sought to benefit from UCD protection would be contrary to the objective of simplicity and rapidity which underlined the creation of this right with its short period of protection.
The court went on to say that the appearance of the part of the product or its component part must be "clearly identifiable" at the time the design is made available to the public. To be able to examine whether that appearance satisfies the condition of individual character (in Article 6(1), CDR) 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 is an important ruling for design owners as it clarifies that it is not necessary for them to make available each part of a product separately to take advantage of UCD. It is perhaps surprising that this is the first time the courts have had to address this question.
The case is not however the end of the road for Ferrari, as it is now over to the German courts to determine whether the features of the two designs claimed by it for the parts of the bodywork of its FXX K track car meet the requirements for obtaining protection as UCDs. Even if they do, as UCD only lasts three years after the design is first disclosed to the public – which in this case was in the 2014 press release – the protection will have expired in 2017.
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