The Court of Justice of the European Union (“CJEU”) on 28 October 2021 ruled that designers are not required to separately publish each part of a product for which protection as an unregistered Community design is sought but also noted that the features of the relevant part(s) must be clearly visible and identifiable in the publication. An English language version of the decision can be found here.
Ferrari SpA (“Ferrari”) sued Mansory Design & Holding GmbH (Mansory Design) and their CEO, WH, for copying several unregistered Community designs, for which Ferrari is the owner. Mansory Design manufactures and sells accessories for the Ferrari 488 GTB to make it resemble the Ferrari FXX K.
In the infringement procedure, the Bundesgerichtshof, Germany’s Federal Court of Justice, requested a preliminary ruling for interpretation of Regulation No 6/2002 of Community designs (“CDR”).
First, Bundesgerichtshof asked, whether making available to the public, by means of Article 11(2) CDR, the image of the entire product is also applicable in making available designs of parts of the whole product, and in this way, the parts become protected by unregistered Community designs individually.
Second, which legal criterion should be applied, when assessing individual character according to articles 4(2)(b) and 6(1) CDR while determining the overall impression of a component part incorporated in a complex product.
Opinion of the Advocate General
According to the German court, for a part of product to be protected as an unregistered Community design, it should have been made publicly available separately and specifically. The publication of the whole product would not be sufficient. This interpretation of Article 11(2) CDR would secure legal certainty so that others could determine the scope of protection.
The Advocate General disagreed with the German court and took the position that it is not necessary to publish a part of a product separately in order to obtain protection as an unregistered Community design. The Advocate General first noted that the Community Regulation does not include a specific provision concerning publication of a part of a product and the definition of making publicly available under Article 11(2) CDR is applied to every design without exception.
Further, the design should be publicly available in a manner that it could “reasonably have become known to the specialised circles”, and the appearance of that 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 able to compare the design in its entirety, or part of it, to the infringing product.
Moreover, the Advocate General noted the intention of the EU legislature, provided in recitals 16 and 25 of the Council Regulation, is to protect unregistered Community designs with a short market life without going through registration formalities once the product is made available to the public. If further formalities were required, e.g., making publicly available each part of the design separately, this would be contrary to the basic purpose of unregistered Community designs, e.g., to obtain design protection easily and promptly.
The Advocate General was not convinced by the argument that legal certainty would be compromised when publication of the entire vehicle is sufficient for unregistered Community design protection of parts of the product. Indeed, the very nature of unregistered Community designs involves reduced levels of legal certainty in comparison to registered Community designs. In addition, the scope of protection of unregistered Community designs is only effective against copying and the duration of the protection is limited to three years from the publication date.
In light of the above, the Advocate General recommended that the CJEU answer the first question of the German court that 11(2) CDR must be interpreted such that the publication of the whole product includes the publication of the design of a part of that product where such part of the product is clearly identifiable when it is made publicly available.
One of the substantive requirements of design protection is the individual character of a design. According to Article 6 CDR, a design is “considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such user by any design which has been 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 their overall characteristics, not in the details.
In this regard, Article 3(a) CDR allows designers to protect parts of a product as a design. But are there limits to the possibility of designers dividing the appearance of their product into different parts which are all protected as separate Community designs, in order to gain maximum protection for their designs.
In the main proceedings, the German court determined that based on the facts of the underlying case an unregistered Community design did not exist, because the relevant part lacked “certain autonomy” and “certain consistency in form” and that Ferrari defined the part arbitrarily.
In contrast, the Advocate General pointed to Article 3(a) CDR which states that design protection is based on “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 Advocate General agreed with German court that the appearance of the part itself must present an overall impression which is independent from the overall impression of the whole product. In this respect, the Advocate General recommended that the CJEU answer the second question based on the strict interpretation of Article 3(a) CDR where 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, colours, shape or texture and that the German approach with the additional criteria of autonomy and consistency of form should not be applied.
In its judgement the CJEU noted that the formal requirement for obtaining an unregistered Community design is making it available to the public according to Article 11(2) CDR. In this regard, the CJEU agreed with the Advocate General that when a part of a product was made publicly available simultaneously with the whole product, the appearance of the part of the product needs to be clearly visible. Otherwise, specialised circles cannot obtain clear and precise information on a part of a product protected as an unregistered Community design.
The CJEU agreed with the policy considerations of the Advocate General that the obligation to separately publish every part of a product would be contrary to the twin objectives of simplicity and speed necessary for unregistered Community designs, particularly since they protect only against direct copies and the duration of protection is limited to three years from the date of publication.
Thus, according to the CJEU Article 11(2) CDR must be interpreted such that designers are not required to publish each part of a product separately in order to obtain unregistered Community design protection for such parts. The features of the part, however, must be clearly visible and identifiable in the publication. The individual character of a design is, after all, compared to one or more specific, individualised, defined and identified designs which are published previously.
The overall impression of a design must be evaluated by the whole appearance of each design. The overall impression of the designs needs to be compared to one another individually and not by a combination of features taken from a number of earlier designs. As the Advocate General stated, 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 instead the relationship between those designs and other earlier designs.
When assessing the individual character through the overall impression produced on the informed user by the appearance of the design, the key point is the concept of design as defined in Article 3(a) CDR considering especially the features of the lines, contours, colours, shape, texture and/or materials.
According to the CJEU, for the purpose of assessment of the requirements for protection as a Community design, the part of a product or a component part of a complex product must be visible and defined by features of its particular appearance. This requires that the appearance of a part of a product itself is capable of producing an overall impression and should be somewhat visible in the whole product “and cannot be completely lost in the product as a whole”.
In this regard, the CJEU stated that Article 11(2) CDR must interpreted such that making available to the public the pictures of a whole product also results in the publication of a part of that product under Article 3(a) CDR, or the publication of a component part of a complex product under Article 3(c) and 4(2) CDR, if the appearance of a part of a product is clearly identifiable at the time of publication of the whole product.
In order to examine whether the appearance of a part fulfills the requirement of individual character under Article 6(1) CDR, according to the CJEU it is necessary that the part of the product should form a visible section of the product or complex product, which is clearly defined by particular lines, contours, colours, shapes or texture.
In light of the CJEU decision, if a designer wishes to receive unregistered Community design protection for a new and individual part of a product, when publishing the whole product, the designer should ensure that the product image clearly shows the parts of the product for which unregistered Community design protection is sought. This means that the appearance of the relevant part and its characteristics must be clearly identifiable and visible from the image containing the whole product and the part in question “cannot be completely lost in the product as a whole”.
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