Background

The ECJ¹ had to decide on two preliminary questions arising from a German legal dispute between Ferrari SpA ("Ferrari") and Mansory Design & Holding GmbH ("Mansory"), including its Chief Executive Officer WH.

On one side, there is Ferrari, the Italian luxury sports car manufacturer, claiming protection on the basis of several unregistered Community designs for parts/views of its supercar FXX K. The vehicle, which was produced in very limited numbers and is intended exclusively for driving on track, was initially presented by Ferrari in a press release dated 2 December 2014 and included the following two photographs:

Ferrari claims to be the owner of an unregistered Community design relating to the appearance of the part of its FXX K model consisting of the V-shaped element on the bonnet, the fin-like element protruding from the center of that element and fitted lengthways ("the strake"), the front lip spoiler integrated into the bumper and the vertical bridge in the center connecting the spoiler to the bonnet.

In the alternative, Ferrari claims to be the holder of an unregistered Community design concerning the two-layer front spoiler, which arose in its favor on publication of the press release of 2 December 2014 or, at the latest, on the release of a film entitled "Ferrari FXX K - The Making Of" released on 3 April 2015. In the further alternative, Ferrari bases its actions on a third unregistered Community design in respect of the entire visible design of a third photograph from the abovementioned press release:

On the other side, there is Mansory, a German company dedicated to the modification and personalization of cars, commonly known as tuning. Mansory offers a variety of modifications for cars (among many other luxury car manufacturers, of course, Ferrari).

In March 2016, Mansory displayed a vehicle under the name of "Mansory Siracusa 4XX" at the International Motor Show in Geneva (Switzerland). The vehicle is the Ferrari 488 GTB which was modified in its exterior appearance to resemble the Ferrari FXX K previously mentioned:

Ferrari claims that the conversion kit offered by Mansory constitutes an infringement of unregistered Community designs. The Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany) dismissed the request for an injunction and a number of associated requests in its entirety. Later on, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany) dismissed Ferrari's appeal on the basis that the unregistered Community designs never existed respectively were not infringed.

Ferrari filed an appeal before the Bundesgerichtshof (Federal Court of Justice, Germany), which considered that the outcome of the appeal (and the case) depends on the interpretation of the European Union Regulation No. 6/2002 on Community designs. Specifically, it depends on assessing if the publication of the image of a product in its entirety amounts to making available all unregistered Community designs of the parts of the mentioned product.

In this sense, the ECJ was asked to answer two prejudicial questions:

1. Whether the disclosure of an overall image of a product can make the unregistered Community designs of its parts arise.
2. If affirmative, which legal criteria are to be applied for the purpose of assessing individual character when determining the overall impression of a component part that is to be incorporated into a complex product.

Decision

The ECJ states that Regulation No. 6/2002 on Community designs and more specifically articles 3, 4, 6 and 11 of the mentioned Regulation must be interpreted as follows:

• Making photos of a product as a whole available to the public can be sufficient for making the design of a part or a component of the product available, if the appearance of that part or component is clearly identifiable at the time of publication of the image or the display of the product.

In case the part or the component is not clearly identifiable and/or visible in the publication of the overall product, the circles specialized in the sector concerned will not be able to acquire the knowledge required by Article 11 of the Regulation for the unregistered Community designs to be protected.

• In order to determine the overall impression of a part or a component part of a complex product, it is necessary that such part or component constitutes a visible section of the whole product, defined by features which define its particular appearance, namely particular lines, contours, colors, shapes or textures.

The final decision must now be made by the Federal Court of Justice, Germany, which will have to determine - taking into account the abovementioned interpretation and criteria established by the ECJ - if the photographs published in the press release in 2014 by Ferrari are capable of making the parts or component parts of the car clearly visible and identifiable.

Comment

The ECJ Judgement emphasizes the protection granted for unregistered Community designs and more specifically for parts or component parts of products which are capable of being understood as disclosed or made available to the public even if they are not sectioned or isolated from the broader product they are part of. This strengthens the legal position of the product manufacturers.

On the other hand, this decision sows some doubts as to the possibility of making available multiple unregistered Community designs by publishing a photography of a product as a whole, leaving decision to Courts whether as the part or component part is clearly visible and identifiable (through its differentiated shapes, textures or stripes). In case of doubt, manufacturers and designers are still faced with the question of whether individual parts should be disclosed separately (before the publication of the overall product) to avoid the risk mentioned before.

Furthermore, the ECJ does not comment on the question whether protection of an unregistered Community design can also be derived from images of the overall product of registered Community designs on the same grounds. There is no apparent difference whether the distinction of the part is made on the basis of the real product or on the basis of the graphic representation in the register. Unfortunately, this question was not part of the preliminary ruling.

1  Judgement of the Court of Justice of the European Union of 28 October 2021 in case C-123/20, Ferrari SpA v. Mansory Design Holding GmbH, available at: curia.europa.eu/juris/document/document.jsf;jsessionid=813F99D3929F166974BDF53EB5A51C58?text=&docid=248287&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=725842