CJEU confirms that partial designs may be protected as unregistered designs (but conditions apply)

The Court of Justice of the European Union last week issued its preliminary ruling in C-123/20 Ferrari. In it, the CJEU confirmed that an Unregistered Community Design under Regulation 6/2002 may vest in a partial design (which the CJEU defines as “a section of the ‘whole’ that is the product”). The request for preliminary ruling arose from a dispute between Ferrari and Mansory Design, currently pending before the German Federal Court of Justice (Bundesgerichtshof).

Background of the case

In the national proceedings, the Italian car manufacturer Ferrari sued Mansory Design, a car modification company, for infringement of UCD rights in several parts of the Ferrari FXX K [see also an earlier post by The IPKat for a more detailed overview of the national case].

Ferrari FXX K was first made available to the public through the publication of a press release, which included several images of the new racing car. Mansory Design, a German car modification company, sells tuning kits (ie, a front bumper lip spoiler), which allow one to modify earlier Ferrari models to make it look like the FXX K. Ferrari alleged that the publication of images of the Ferrari FXX K as a whole gave rise to individual protection a separate UCD for various parts of the car (such as the front bumper lip spoiler, which Mansory Design sold).

The first and second instance courts sided with Mansory Design, ruling that Ferrari had arbitrarily chosen parts of the Ferrari FXX K for UCD protection, when such rights were “non-existent”, this because the claimed parts lacked “certain autonomy” and “certain consistency of form” to be a valid UCD. In the view of the German courts, the publication of a product only amounted to UCD protection for the product as a whole. Ferrari appealed to the Bundesgerichtshof, which stayed the proceedings and asked the CJEU:

(1) whether UCD protection for individual parts of a product arise as a result of disclosure of an overall image of a product; and

(2) if so, whether additional legal criteria are to be considered when assessing the individual character of a component part of a complex product (as characterized by the referring court in terms of “certain autonomy” and “certain consistency of form”).

In August, Advocate General (AG) Øe advised the Court to answer that partial designs may indeed be protected under UCD rights. For such protection to arise, the appearance of the part of the product must be ‘clearly identifiable’, and, if made available through a photograph, such part shall be ‘clearly visible’. The AG also opined that no additional criteria shall be applicable (ie ‘autonomy’ or ‘consistency’, as advanced in the second question from the Bundesgerichtshof).

CJEU’s ruling

In its judgment, the CJEU sided with the AG Opinion, albeit with some nuances.

Both questions from the Bundesgerichtshof were examined together. The CJEU also stated that its analysis is applicable both to: (i) parts of a product [say, a mug handle]; and (ii) component parts of complex product, within the meaning of Art. 3(c) and Art. 4(2) of Regulation 6/2002 [i.e., a car wheel, which can be disassembled and later re-assembled to a car].

A cat sitting on a complex product

The Court further affirmed that, once the substantial requirements for protection are satisfied, the only formal requirement for giving rise to an UCD is that it is be made available to the public in accordance with Art. 11(2) of Regulation 6/2002 (para. 36). This rule is applied without distinction for product taken as a whole or for parts and component parts. Thus, designers are not required to make available separately each of the parts of their products to obtain protection under UCD rights (para. 44). Ruling to the contrary would be run against the system’s objective of simplicity and rapidity for designers (para. 40).

That said, observed the Court, two additional criteria (already found in the AG Opinion) apply to parts and component parts so as to ensure legal certainty vis-à-vis third parties. First, the appearance of such part shall be “clearly identifiable, when the design is made available” (para. 38), in order that other economic operators obtain relevant information concerning the rights of third parties. Second, when the whole product is made available through the publication of images, such part or component part shall be “clearly visible” (para. 44), meaning that it shall be capable, by itself, “of producing an overall impression and cannot be completely lost in the product as a whole” (para. 50). The visibility requirement is necessary for later examination, whether the design satisfies the condition of individual character under Art. 6(1) of Regulation 6/2002.

Broader relevance of the case

The Ferrari judgment is also important as part of the broader discussion concerning the ‘general visibility doctrine’. In short, proponents of this approach argue that all designs should be visible to be protected.

Currently, visibility is only required for component parts of complex products (Art. 4(2) and 4(3) of Regulation 6/2002), this to avoid abusive registrations for car engines or other devices placed inside the machinery. The examination is done from the perspective of ‘normal use’ by an ‘end user’ (a notion different from the ‘informed user’ applicable to individual character).

In the Ferrari judgment, the CJEU states that the visibility requirement is germane not only for component parts, but also parts of products in general. It also recalls the principle that ‘appearance is the decisive factor for a design’, as established in C-361/15 P Easy Sanitary Solutions. As such, it is a short leap to requiring visibility for all categories of designs.

In T-494/12 Biscuits, the General Court (GC), in an invalidity proceeding, already applied the general visibility doctrine to chocolate-filled biscuits. The GC recognised that biscuits are not complex products (and, thus, the visibility requirement during normal use should not be applicable). Yet, it denied protection to the contested design, stating that only visible characteristics of the product shall be taken into account during the examination (excluding the chocolate layer inside the biscuit).

This approach was later supported in the ‘Legal Review on industrial design protection in Europe’, carried out by external contractors for the European Commission, as part of the Commission’s plans to review design rules in the EU.

The Legal Review suggested that--

a design right [shall protect] the appearance of the design, which comprises of all features which contribute to the visual appearance of the design […] which are visible to the informed user, when making decisions to either purchase or use the product incorporating the design. (p. 158)

This is because design rights are a marketing tool for their owners, and what is not visible to the informed user should not be eligible for protection. The visibility requirement would thus be extended to all designs, and not only to component parts. The consideration would be done from the perspective of an informed, and not end, user. This approach has also found support among scholars.

The European Commission is expected to present a draft Design Directive, including its position on visibility, in 2022.