Ferrari c. Mansory Design, judgment of the CJEU in case C-123/20: publication of an entire product may be sufficient for the protection of an unregistered Community design of parts of this product


The Court of Justice of the European Union (“CJEU”) ruled on October 28, 2021 that designers are not required to separately publish each part of a product for which protection as an unregistered Community design is requested, but also noted that the characteristics of the parties should be clearly visible and identifiable in the publication. An English version of the decision is available here.

introduction

Ferrari SpA (“Ferrari”) sued Mansory Design & Holding GmbH (Mansory Design) and their CEO, WH, for copying several unregistered community models owned by Ferrari. Mansory Design manufactures and sells accessories for the Ferrari 488 GTB to make it look like the Ferrari FXX K.

In the infringement proceedings, the Bundesgerichtshof, the German Federal Court of Justice, requested a preliminary ruling on the interpretation of Regulation 6/2002 on Community designs (“CDR”).

First, the Bundesgerichtshof asked whether the making available to the public, by means of Article 11 (2) CDR, of the image of the whole product is also applicable to the making available of the drawings of parts of the whole product, and in this way the parts become individually protected by unregistered Community designs.

Second, what legal test is to be applied when assessing individual character in accordance with Articles 4 (2) (b) and 6 (1) CDR when determining the overall impression of a component incorporated in a product complex.

Opinion of the Advocate General

First question

According to the German court, for part of the product to be protected as an unregistered Community design, it should have been made public separately and specifically. Publishing the entire product would not be sufficient. This interpretation of Article 11 (2) CDR would ensure legal certainty so that others can determine the scope of protection.

The Advocate General disagreed with the German court and considered that it was not necessary to publish part of a product separately to obtain protection as an unregistered Community design. The Advocate General first noted that the Community Regulation does not include a specific provision concerning the publication of part of a product and that the definition of making available to the public under Article 11, paragraph 2, CDR applies to each design without exception.

In addition, the design must be accessible to the public in such a way that it “is reasonably known to specialist circles”, and the appearance of this part of the product must be clearly identifiable and visible in the publication. Therefore, the form in which the design is made available to the public must be of good quality in order to be able to compare the design or part of it with the infringing product.

In addition, the Advocate General noted that the intention of the EU legislator, provided for in recitals 16 and 25 of the Council Regulation, is to protect unregistered Community designs with a short shelf life on the market. without going through registration formalities once the product is made available to the public. If other formalities were required, for example making each part of the design available to the public separately, this would be contrary to the fundamental objective of unregistered Community designs, for example obtaining protection for the design or model easily and quickly.

The Advocate General was not convinced by the argument that legal certainty would be compromised when the publication of the whole vehicle is sufficient for the protection of the unregistered Community design of parts of the product. Indeed, the very nature of unregistered Community designs implies reduced levels of legal certainty compared to registered Community designs. In addition, the scope of protection of unregistered Community designs is only effective against copying and the term of protection is limited to three years from the date of publication.

In light of the above, the Advocate General recommended that the CJEU respond to the German court’s first question that 11 (2) CDR should be interpreted so that the publication of the entire product includes the publication of the design of part of this product. when such part of the product is clearly identifiable when made public.

Second question

One of the substantive requirements of design protection is the individual character of a design. According to Article 6 of the CDR, a design is “considered to have an individual character if the overall impression which it produces on the informed user differs from the overall impression produced on this user by any design made available to the public ”. Thus, the comparison is made between the overall impression of a design and an earlier design or product. The key point is whether the designs are similar in general characteristics, not in details.

In this regard, Article 3 (a) CDR allows designers to protect parts of a product as a design. But are there any limits to the possibility for creators to divide the appearance of their product into different parts which are all protected as separate Community designs, in order to obtain maximum protection for their designs? .

In the main proceedings, the German court determined that, on the basis of the facts of the underlying case, an unregistered Community design did not exist, because the relevant part lacked “a certain autonomy “And” of a certain consistency in form “and that Ferrari defined the part arbitrarily.

On the other hand, the Advocate General recalled Article 3 a) of the CDR which provides that the protection of designs is based on “the appearance of all or part of a product resulting from the characteristics, in particular, of the lines, contours, colors, shape, texture and / or materials of the product itself and / or its ornamentation ”.

The Advocate General agreed with the German court that the appearance of the part itself should present an overall impression independent of the overall impression of the entire product. In this regard, the Advocate General recommended that the CJEU answer the second question on the basis of the strict interpretation of Article 3 (a) CDR when the visible part of a product must be considered as a part of a product, that its appearance can be protected by a Community design defined by particular lines, contours, colors, shape or texture and that the German approach with the additional criteria of autonomy and consistency of form should not be applied.

CJEU decision

In its judgment, the CJEU noted that the formal requirement to obtain an unregistered Community design is to make it available to the public in accordance with Article 11 (2) CDR. In this regard, the CJEU agreed with the Advocate General that when a part of a product is made public at the same time as the whole product, the appearance of the part of the product should be clearly visible. Otherwise, specialist circles cannot obtain clear and precise information on part of a product protected as an unregistered Community design.

The CJEU agreed with the Advocate General’s policy considerations that the obligation to publish each part of a product separately would be contrary to the dual objective of simplicity and speed necessary for unregistered Community designs, all the more so that they protect only against direct copies and the term of protection is limited to three years from the date of publication.

Thus, according to the CJEU, Article 11 (2) CDR must be interpreted so that designers are not required to publish each part of a product separately in order to obtain protection for a non-Community design. recorded for these parts. The characteristics of the part must, however, be clearly visible and identifiable in the publication. The individual character of a design is, after all, compared to one or more specific, individualized, defined and identified designs that are previously published.

The overall impression of a design should be judged by the overall appearance of each design. The overall impression of the designs should be compared individually and not by a combination of features drawn from a number of prior designs. As stated by the Advocate General, individual character within the meaning of Article 6 CDR is not determined by the relationship between the design of the whole product and the designs of the parts of the product, but rather the relationship between these designs and other earlier designs.

When assessing the individual character through the overall impression produced on the user informed by the appearance of the design, the key point is the design concept as defined in Article 3, point a), of the ground floor, taking into account in particular the characteristics of lines, contours, colors, shape, texture and / or materials.

According to the CJEU, for the purposes of assessing the requirements of protection as a Community design, the part of a product or a constituent element of a complex product must be visible and defined by the characteristics of its particular aspect. This requires that the appearance of part of a product itself be able to produce an overall impression and be somewhat visible throughout the product “and cannot be completely lost in the product as a whole” .

In this regard, the CJEU has stated that Article 11 (2) CDR should be interpreted in such a way that making images of an entire product available to the public also results in the publication of part of that product. under Article 3 (a) CDR, or the publication of a component of a complex product under Article 3 (c) and 4 (2) CDR, if the Appearance of part of a product is clearly identifiable at the time of publication of the entire product.

In order to examine whether the appearance of a part fulfills the requirement of individual character under Article 6 (1) CDR, it is necessary, according to the CJEU, that the part of the product constitutes a visible section product or complex product, which is clearly defined by particular lines, contours, colors, shapes or textures.

Conclusion

In light of the CJEU ruling, if a designer wishes to benefit from unregistered Community design protection for a new and individual part of a product, upon publication of the entire product, the designer must ensure that the product image clearly shows the parts of the product for which protection of an unregistered Community design is sought. This means that the appearance of the part concerned and its characteristics must be clearly identifiable and visible from the image containing the whole product and that the part in question “cannot be completely lost in the whole product. “.


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