These two interesting questions were recently referred to the Court of Justice of the European Union (CJEU) by the German Federal Supreme Court (Bundesgerichtshof – BGH). It remains to be seen how the CJEU will answer these questions. In the meantime this article focusses on background information to the dispute, the BGH’s opinion and reasons why the CJEU might want to see this differently.

Background

The plaintiff presented its “Ferrari FXX K” model for the first time in a press release on 02 December 2014, which merely contained photos of the entire car. The “Ferrari FXX K” design inter alia includes a noticeable V-shape on the hood and a particular spoiler design. The limited edition model available for the purchase price of EUR 2.2 million was sold out within days.

The defendant manufactures car parts. Since 2016 the defendant offered tuning kits for the “Ferrari 488 GTB” model. These tuning kits helped to alter the design of the Ferrari 488 GTB models to include a “V-shape” on the hood of the car and a new spoiler.

Ferrari inter alia claims that the parts offered in the “Front Kit” infringe Ferrari’s unregistered Community design (UCD) rights in the V-shape as well as the spoiler design of its “Ferrari FXX K” model.

The BGH’s opinion

After the first two instance courts refused Ferrari’s claim, the BGH referred the above questions to the CJEU. In its referral decision, the BGH already provided its proposed answers to these two questions as follows:

Why should unregistered designs be treated differently from registered designs?

The BGH holds the view that the protection of product parts requires for the parts to be made publicly available individually. Disclosing only the complex product, like an entire car, would not suffice. This would mirror registered design protection, which if a design is filed for an entire product, only covers the design of the entire product and not individual parts visible in the design registration.

As far as individual character of such product parts is concerned, this would require that, in the perception of the informed user, the appearance of the part is not completely lost in the appearance of the complex product, but has a certain independence and concise form which makes it possible to establish an overall aesthetic impression independent of the overall form.

Food for thought

We concur that the BGH’s view is in line with the legal rules applied to registered designs and there is definitely an appeal to applying the same rules to UCD. So this approach would certainly be a neat one.

However, one could wonder if UCD protection could not be allowed a little leeway in order to free it from its perception as the “ugly stepsister” of registered Community designs. After all, while UCDs still have to fulfil the same prerequisites as registered designs, such as those pertaining to novelty and individual character, for which the designer bears the burden of proof, UCDs only protect against imitations and that only for a period of three years. Consequently, the scope of protection granted to a registered design is much broader and potentially longer than that for UCDs. Furthermore, businesses for the most part do not actively choose only to rely on UCD protection. Rather, they often do so in case of blatant imitations of products or parts thereof, for which they do not have registered design protection. Therefore, why not let novelty and individual character be the deciding factors and make the disclosure of the complex product as a whole suffice? On the other hand, it is of course also in the business’ hands to disclose in parallel the entire complex product as well as the main parts of it separately – which might lead to a greater legal security for everyone.

What does this mean for designers?

That being said, if you want part of your products to enjoy design protection in the EU, it is safest to register the design of said product part – preferably by ensuring beforehand that it meets all prerequisites, such as novelty and individual character. You may also benefit from the bulk discount granted to an application for multiple designs for products falling into the same category (Locarno class) as well as parts thereof in the same application.

In short

When it comes to the protection of visible product parts, registered designs may be the most reliable option to protect your design.

Depending on the CJEU’s decision unregistered design protection may be a viable option as well, bearing in mind that the protection is limited to imitations and a maximum period of three years.

Case details at a glance

Jurisdiction: Germany
Decision level: Bundesgerichtshof
Date: 30 January 2020
Citation: I ZR 1/19