By the end of last year, the European Court of Justice (CJEU) extended the scope of application of the unregistered Community design (Judg. v. 28.10.2021, C-123/20 – Ferrari SpA v. Mansory Design Holding GmbH, WH). When it comes to combating counterfeiting, it is now possible to rely on the unregistered Community design even if imitators only take over parts of an entire product.
Innovative products quickly draw imitators to the scene. Insofar as the innovation relates to the appearance of a product, such appearance can be safeguarded by a design registration. Similarly, individual parts of a product may be monopolised separately by means of a design registration, whereby a simultaneous protection of the product and its patentable elements can indeed be achieved quite inexpensively through a joint application.
Without registered design protection, it can prove to be somewhat difficult to counteract imitations that adopt parts of one’s own product but in the end have a very different overall impression. In addition to claims under competition law, which often prove to be a blunt sword in the fight against the imitation of product parts, the so-called unregistered Community design can be invoked. This right was originally created to protect short-lived products and can – for a limited period of time – be applied
- within the first three years after the first publication of a product
- in the European Union.
against veritable imitation. The design protection is established at the moment the product is disclosed to the public for the first time.
The prevailing legal commentary has so far been in agreement that the disclosure of a complex product cannot at the same time give rise to isolated protective rights for the individual components of the product. The reason given was that the protective rights situation would then be almost impossible to oversee. Partial protection should therefore not result from the disclosure of a complete product.
The CJEU has now taken a different view and held that partial protection was possible in the above-mentioned ruling. In the case underlying the decision, the car manufacturer Ferrari had brought an action against a vehicle tuner in Germany. The latter offered tuning components, including a V-shaped bonnet design, with which a Ferrari 488 GTB could be given the appearance of the top-of-the-range FXX K model. Ferrari relied on an unregistered Community design on the V-shaped element of the FXX K and argued that the design protection on the bonnet originated in the publication of the (entire) FXX K model.
The first two instances had dismissed a design protection, the German Federal Court of Justice (BGH) referred the case to the CJEU. The CJEU now held that, in principle, a derived partial protection can originate from a product’s disclosure as an unregistered Community design. The prerequisite for this is that the appearance of the part in the overall product is clearly visible and distinguishable.
The decision essentially has the potential to close the gulf in legal protection that currently exists for product parts that are not protected under registration law. It remains to be seen how courts will adapt to these new requirements and how “small-scale” partial protection can be asserted in the future. Either way, partial protection will continue to succeed more extensively in the future through design registration, as this, on the one hand, does not allow any discussions about the required degree of separability and, on the other hand, is not limited to three-years of protection.