The European Court of Justice (ECJ) recently ruled on the possibility of claiming protection for a part of a product or a component part of a complex product as an unregistered Community design. The ECJ ruled that protection as an unregistered Community designs is possible if the underlying product itself has been made available to the public without the need to publish the relevant part of the product separately (ECJ, judgment of October 28, 2021, Case C-123/20 – Ferrari).
The facts of the case
Ferrari S.p.A. (Ferrari) brought an action before the German infringement courts in Dusseldorf against a company specialized in the personalization (so-called “tuning“) of luxury class vehicles. In the case at issue, Ferrari did not rely on its various registered design rights protecting its prestigious cars and parts of its cars, but based its claims on unregistered Community designs relating only to the appearance of parts of its cars as shown in press releases of the car.
The first two instances dismissed the action on the grounds that Ferrari had not proved that the parts on which the action was based met the absolute minimum requirements for protection as designs, namely a certain autonomy and consistency of form.
Ferrari filed an appeal on a point of law before the German Federal Court of Justice (Bundesgerichtshof). The Federal Court of Justice referred the case to the ECJ, holding that the outcome of the appeal depended on the interpretation of Regulation No. 6/2002 (the Community Design Regulation), namely the circumstances in which the appearance of a part of a product may be protected as an unregistered Community design.
The Federal Court of Justice essentially referred to the ECJ the question of whether the making available to the public of images of a product, such as the publication of photographs of a car, may result in a design on a part or component of that product being made available to the public and, if so, the extent to which the appearance of a part of a product or of a component of a complex product must be autonomous in relation to the product as a whole in order for it to be possible to examine whether that appearance has individual character as required for protection as a design.
The decision of the ECJ
In its decision of October 28, 2021 (Case C-123/20 – Ferrari), the ECJ held that an unregistered Community design may subsist in a part of a product or in a component part of a complex product if certain criteria are met.
The ECJ stated that in order to assess the requirements for protection as a unregistered Community design, the part of the product or component part of the complex product in question must be visible and defined by features constituting its particular appearance, i.e. by particular lines, contours, colors, shapes and texture. This requires that the appearance of that part of the product or that component part of a complex product is in itself capable of creating an overall impression and cannot be completely lost in the product as a whole.
The ECJ also ruled that the publication of a “design” according to the Community Design Regulation must be interpreted as meaning that the making available to the public of images of a product, such as 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 is clearly identifiable at the time the design is made available. In order for it to be possible to examine whether this appearance fulfills the requirement of individual character, it is necessary that the part or component in question is a visible section of the product or of a complex product that is clearly defined by certain lines, contours, colors, shapes or textures.
Consequences of the decision
The ECJ’s decision in the Ferrari case provides an interesting additional tool for rights holders and manufacturers of products, as it confirms the institute of protection for individual parts of a product or component parts of a complex product as unregistered Community design, whereas some national courts in the EU, e.g. the German Federal Court of Justice in its judgment of March 8, 2012 (Case No. I ZR 124/10 – Weinkaraffe), had expressly denied protection for visible parts of a registered design arguing that legal certainty requires that only those appearances of parts of a product that are independently registered as design are protected.
Rights holders and manufacturers can therefore now invoke the registered design for products and parts of the products (if registered separately), but also claim design protection for its unregistered products and also parts thereof, if the conditions specified by the ECJ are met.