Can parts of a Ferrari be protected as Unregistered Community Designs?
When can component parts of a product be protected as unregistered Community designs (UCDs)? The Court of Justice of the EU (CJEU) recently answered that question in a case concerning design rights in a Ferrari car (Case C-123/20).
The case, which was before the German Federal Court of Justice (BGH) related to the Ferrari FXX K model, presented to the public in December 2014 (pictured).
Ferrari alleged that Mansory Design (and Mansory’s CEO) infringed its UCDs by marketing kits of components to alter the appearance of another Ferrari car to make it look like an FXX K. The kits included visible body panels.
The BGH referred two questions to the CJEU asking essentially if UCDs in individual parts of a product can arise as a result of disclosure of an overall image of a product and, if so, how should their individual character be assessed.
In its judgment, the Court said the requirement to identify the subject matter of protection “does not imply an obligation for designers to make available separately each of the parts of their products”: that would be contrary to the objective of simplicity and rapidity.
Therefore, the making available of images such as those in this case entails the making available of a design “provided that the appearance of that part or component part is clearly identifiable at the time the design is made available”.
If, as in the present case, the design is made available through images, the features that are claimed must be “clearly visible”. In order to examine whether the appearance satisfies the condition of individual character, therefore, “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”.
UCD rights, which last for three years from publication, provide valuable protection for designers, including in the fashion industry where new designs are generated frequently and there is not always time or budget to seek registration.
This judgment provides reassurance that in the case of complex products, such as cars, a UCD can also be claimed in the component parts provided they are visible and clearly defined.