AG Øe advises that partial designs may be protected as unregistered designs

Just before closing down for summer vacation, Advocate General (AG) Saugmandsgaard Øe issued his Opinion in Case C-123/20 concerning the protectability of ‘partial designs’ (design rights for part of a product) as an unregistered Community design right.

The request for preliminary ruling by the Court of Justice of the European Union (CJEU) originates from the German Federal Court of Justice (Bundesgerichtshof). The German court is currently hearing a dispute between the Italian racing car manufacturer Ferrari and Mansory Design, a car modification company located in Germany [the summary below is based is on the submission by the Bundesgerichtshof to the CJEU, available in German here and in English here].

In December 2014, Ferrari issued a press release, where the new Ferrari FXX K, a limited production track car, was first made available to the public (within the meaning of the Design Regulation) through a press-release, which included the following images:

The defendant in the national proceedings (case I ZR 1/19), Mansory Design, is a car modification company, which sells “body kits” that allow one to upgrade (to “tune”, in the car jargon) the appearance of luxury cars. In 2016, Mansory Design started selling tuning kits, which allowed one to upgrade a relatively cheaper (as "cheap" as a Ferrari can be) Ferrari 488 GTB to make it look more like a more expensive Ferrari FXX K. The tuning kits included a ‘front kit’, ‘rear kit’, ‘side kit’, ‘roof cover’ and ‘rear wing’.

According to Ferrari, these tuning kits infringed one or several unregistered designs, the rights for which arose through Ferrari’s publication mentioned above. More specifically, Ferrari claimed design rights in—

‘the V-shaped element on the bonnet, the fin-like element protruding from the centre of that element and fitted lengthways (the ‘strake’), the front lip spoiler integrated into the bumper and the vertical bridge in the centre connecting the spoiler to the bonnet’ (para. 23 of the AG Opinion, see below the illustration that was included in the Bundesgerichtshof submission, but did not appear in the original press release).

In the alternative, Ferrari claimed unregistered design rights in the front lip spoiler of the car. Ferrari also claimed infringement of the unregistered design rights in the car as a whole.

When a picture is worth a thousand words

First the Regional Court of Düsseldorf, and then the Highest Regional Court of Düsseldorf, both rejected Ferrari’s claims. The first instance court, relying on national German case law, ruled that providing partial protection for an unregistered Community design would go against the principle of legal certainty. Specialised circles, i.e., economic operators concerned by the design, would not be able to determine which parts of the disclosed design constitute separate unregistered designs. However, the Regional Court also recognised that the issue had not yet been settled by the CJEU.

The decision was confirmed by the Highest Regional Court (Oberlandesgericht), which considered that Ferrari’s first and second claims for an unregistered design right in the cars were ‘non-existent’, as they did not satisfy the minimum protectability requirements. Thus, for the first claimed unregistered design, it lacked ‘certain autonomy’ and ‘certain consistency of form’, while the second claimed design lacked a ‘certain consistency of form’. Rather, they had been ‘arbitrarily’ chosen by Ferrari. To the contrary, there was a valid claim for an unregistered design in the appearance of the Ferrari FXX K as a whole, according to the Court, but it was not infringed by Mansory Design.

Ferrari appealed to the Bundesgerichtshof, which decided to stay the proceedings and request a preliminary ruling concerning the interpretation of Article 11(1) and the first sentence of Article 11(2), as well as of Article 4(2)(b) and Article 6(1)(a), of Regulation 6/2002. The German Court asked:

(1) whether unregistered Community design’s protection for individual parts of a product (the so-called ‘partial design’) arise as a result of disclosure of an overall image of a product; and

(2) if it is the case, whether additional legal criteria are to be considered when assessing individual character of a component part of a complex product (as suggested by the referring court in terms of ‘certain autonomy’ and ‘certain consistency of form’).

In his Opinion, the Advocate General opined that individual parts of a product may indeed be protected as UCDRs, even when only the full product was made available to the public. The AG reasoned that, first, no provision to the contrary was included in Regulation 6/2002. He added that a reading to the contrary would discourage innovation and run against the objectives of simplicity and rapidity, on which the EU unregistered design system relies. Companies may not be required to make available various parts of their products separately from the overall product.

The AG nevertheless introduced two criteria that must be satisfied for a partial design to be protected as an unregistered design:

(i) the appearance of the part of the product shall be ‘clearly identifiable’; and,

(ii) if made available through a photograph, such part shall be ‘clearly visible’ (emphasis by AG, paras. 64-65 of the Opinion).

Meeting these criteria would be sufficient to satisfy the requirement of legal certainty vis-à-vis third parties. The AG expressed his doubts as to whether Ferrari complied with these two requirements (para. 66).

In its second question, Bundesgerichtshof asked whether additional criteria exist when examining the individual character of a partial design, such as ‘autonomy’ or ‘consistency’. The AG suggested answering in the negative, this to avoid introducing unwritten criteria solely by means of judicial interpretation without any explicit anchor in the Regulation.

Instead, the AG called for a stricter examination of designs so as to comply with the definition under art. 3 of the Regulation: a design shall be defined by its lines, contours, colours, etc (para. 116 of the Opinion). Where a claimed design does not meet this definition, it shall be considered non-existent.

All in all, it seems that the AG’s interpretation of Regulation 6/2002 will allow a balance between the interests of car manufacturers and those of suppliers of aftermarket products (or, as the AG calls it, the ‘equilibrium desired by the EU legislature’). The ruling by the CJEU in C-123/20 is not expected before end of 2021.