This avoids the need to ‘publish’ the various parts of a product separately in order to obtain unregistered protection for these parts.
Unregistered Community designs are a useful form of protection for products in the European Union (EU). They automatically come into existence where a product is first disclosed in the EU and protect the appearance of products from copying. They last for three years from that first disclosure.
In Ferrari SpA v Mansory Design & Holding GmbH and WH, C-123/20, EU:C:2021:889, Ferrari had published photographs of its top-of-the-range FXX K car. Mansory Design then produced ‘tuning kits’ containing components that could be used to alter the appearance of the Ferrari 488 GTB so that it looked like the Ferrari FXX K. Ferrari sought to assert unregistered rights in parts of the FXX K in the German courts, seeking an injunction to stop Mansory from selling the kits throughout the EU. Ferrari’s unregistered rights in the relevant component parts were said to arise from the publication of the photograph of the whole car.
Ferrari’s published photographs as reproduced in the judgment.
Following several appeals within the German court system, the Federal Court of Justice in Germany sought clarification from the ECJ on the possibility that an image of the overall product (the car) could give rise to unregistered Community design rights in parts of the product (for example, the bonnet).
The ECJ noted that the objective of the unregistered design system was to provide designers with a simple and rapid approach for protecting their work. The ease of acquiring the rights was balanced against the significantly shorter term of protection relative to registered designs, as well as only providing protection against copying. Introducing a requirement that designers had to disclose separately each part of the product for which they wanted protection would upset this balance and be overly onerous given the aims of the unregistered system.
The ECJ therefore concluded that the disclosure of an image of the overall product also gives rise to unregistered rights in parts of the product, so long as the appearance of those parts are clearly identifiable in the image. It was also noted that those parts had to be capable of giving an overall impression in themselves and not be completely lost in the product as a whole. The German court will now consider this case in view of the ECJ’s guidance.
The ECJ’s judgment has reinforced the usefulness of unregistered designs and helpfully illustrates that designers can obtain unregistered protection for parts of their designs that have been disclosed within the context of a complete product.
