European Court of Justice: The Bench comprising of E. Regan, President of the Chamber, C. Lycourgos, President of the Fourth Chamber, and M. Ilešič (Rapporteur), J., held that public discloser of a product, such as photographs of a car, entails the discloser of a design of a part for the purpose of rights conferred by unregistered Community design. The Bench clarified,
“In order for it to be possible to examine whether that appearance satisfies the condition of individual character referred to in Article 6(1) of the regulation , 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.”
Background
The requests had been made in proceedings between Ferrari SpA, a racing car and sports car manufacturer established in Italy and Mansory Design & Holding GmbH (‘Mansory Design’) and WH, the Chief Executive Officer of that company, concerning an action for infringement and related claims, on the ground of an alleged infringement of the rights conferred by an unregistered Community design.
The respondent, Mansory Design, an undertaking specialised in personalisation/tuning of high-end cars had produced and marketed sets of personalisation accessories (known as ‘tuning kits’) designed to alter the appearance of the Ferrari 488 GTB in such a way as to make it resemble the appearance of the Ferrari FXX K. Admittedly, Ferrai’s FXX K model was top-of-the-range and was claimed to be produced in very limited numbers. Ferrari first presented the FXX K model to the public in a press release dated 02-12-2014. That press release included the following two photographs, showing, respectively, a side view and a front view of the vehicle:
The claim arose when the Mansory Fesign displayed a vehicle featuring that conversion under the name Mansory Siracusa 4XX at the International Motor Show in Geneva, in March 2016. Ferrari filed an infringement claim maintaining that the marketing of those components by Mansory Design constituted an infringement of the rights conferred by one or more unregistered Community designs of which it was the holder.
Questions Referred
The Federal Court of Justice (Referring Court) asked, can unregistered Community designs in individual parts of a product arise as a result of disclosure of an overall image of a product?
Consideration of the questions referred
Relying on the definition of “design” under Article 3(a) of Regulation No 6/2002, which states, design is “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation”; the Bench opined that appearance is the decisive factor for a design.
Opining that the objective of Regulation No 6/2002, is the protection of design rights for one area encompassing all the Member States, an enhanced protection for industrial design encouraging innovation and development of new products and investment in their production, the Bench stated that by establishing an unregistered Community design system, the EU legislature intended, with a view to promoting innovation, to protect designs applied to or incorporated in products with a short market life in respect of which their designers wish to obtain rapid and effective protection without having the burden of registration formalities and for which the duration of protection is of lesser significance.
Protection of Community Design
The formal condition for giving rise to an unregistered Community design is that of making available to the public in accordance with the detailed rules laid down in Article 11(2) of that regulation. In accordance with that provision, a design is to be deemed to have been made available to the public within the European Union ‘if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the [European Union]’.
Therefore, the unregistered Community design arises as from the date on which it was first made available to the public within the European Union and under that provision, a design is ‘made available’ when it is disclosed by events which may, in the normal course of business, ‘reasonably have become known to the circles specialised’ in the sector concerned, operating within the European Union.
The Bench opined that the criterion was satisfied where the images of the design at issue were distributed to traders operating in that sector. However, the Bench added that in order for the making available to the public of the design of a product taken as a whole to entail the making available of the design of part of that product, it is essential that the appearance of that part is clearly identifiable when the design is made available. Hence,
“The criterion of awareness of the events constituting the making available to the specialised circles requires that the design of the part or component of the product is clearly identifiable.”
Answering the referred question in affirmative, the Bench stated the making available to the public of the image of a product in its entirety also amounts to the making available of the designs of the parts of that product, provided that the features of the part or component of that product in respect of which the design at issue is claimed are clearly visible. In other words, for valid publication it is essential to have an image that makes it possible to visualise, precisely and with certainty, the design claimed.
Low Level of Protection
The Bench reminded, it should be noted that the level of protection enjoyed by the holder of an unregistered Community design is low as the holder is to be protected only against the copying of that holder’s unregistered Community design. Moreover, the duration of the protection afforded to holders of unregistered Community designs is limited to three years as from the date on which the design was first made available to the public.
Conclusion
In the light of the foregoing considerations, the answer to the questions referred was that 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, or of a component part of that product, as a complex product, within the meaning of Article 3(c) and Article 4(2) of the regulation, provided that the appearance of that part or component part was clearly identifiable at the time the design was made available.[Ferrari SpA v. Mansory Design Holding GmbH, Case C-123/20, decided on 28-10-2021]