The Court of Justice of the European Union (CJEU) has ruled on the conditions under which the appearance of a part of a product (or a partial design) may be protected as an unregistered Community design.

This ruling comes from a dispute in which Ferrari, the Italian racing and sports cars manufacturer, sued Mansory Design, a company specialising in the personalisation (known as “tuning”) of high-end cars, for infringement of a number of unregistered Community designs.

The dispute

The dispute arose between the parties in Germany as a result of Mansory Design’s manufacture and sale of tuning kits designed to make the Ferrari 448 GTB resemble the (more prestigious) Ferrari FXX K.

In particular, on December 2, 2014, Ferrari publicly disclosed for the first time its top-of-the-range FXX K in a press release, a car model produced in very limited numbers and designed for use on racetracks only—it was not approved for use on public roads. The press release contained images of the overall appearance of the FXX K (one side view and one front view).

Since 2016, Mansory Design has distributed tuning kits for the Ferrari 488 GTB, a road-going car produced in unlimited numbers, to make it look like the Ferrari FXX K.

Ferrari claimed that marketing those tuning kits constitutes an infringement of its unregistered Community designs covering the appearance of certain elements of the FXX K bodywork.

The relied-on designs identified by Ferrari concerned certain portions of the FXX K design such as the V shaped element of the car bonnet, the protruding fin-like element (“strake”) and the front spoiler integrated into the bumper, and the vertical bridge in the centre connecting the front spoiler to the bonnet. Furthermore, Ferrari relied on a second unregistered Community design for the appearance of the front spoiler or, alternatively, for the presentation of the Ferrari FXX K as a whole.

The event on which Ferrari relied to make the design available to the public was its press release, which published photographs of the overall appearance of the FXX K, including a front view.

The court of first instance dismissed Ferrari’s claims, as did the court of appeal. According to that court, the first and second unregistered Community designs claimed were non-existent, lacking the minimum requirement of a certain autonomy and a certain consistency of form, and merely referred to a section of the vehicle arbitrarily defined by Ferrari. As to the third design, covering the overall appearance of the Ferrari FXX K, it did exist, but Mansory Design had not infringed it.

Ferrari then filed an appeal on a point of law before the Bundesgerichtshof (German Federal Court of Justice). That court held that the outcome of the appeal depends on the interpretation of the conditions in which the appearance of a part of a product (or a partial design) may be protected as an unregistered Community design under Regulation (EC) No. 6/2002.

The Bundesgerichtshof stayed the proceedings and referred the following two questions to the CJEU:

• Whether unregistered Community designs in the individual parts of a product arise as a result of the making available to the public the image of a product in its entirety; and, assuming that that is the case
• Whether the appearance of a part of the product must, in order to be capable of constituting a separate design, separate from the overall appearance of the product, present a certain autonomy and a certain consistency of form, so that it is possible to identify an aesthetic overall impression, which is independent from the overall form.