EUROPEAN UNION: Does Ferrari Have Unregistered Rights to Parts of a Supercar’s Design?

In a case that could affect thousands of registered designs, the Court of Justice of the European Union (CJEU) has been asked whether changes to components of a Ferrari to look like a much more expensive model infringe unregistered Community design rights.

In Case C-123/20, Ferrari SpA v. Mansory Design & Holding GmbH, the German Federal Supreme Court (Bundesgerichtshof) referred two questions to the CJEU. The case was referred by the Bundesgerichtshof on March 4, 2020, and lodged with the CJEU on June 12, 2020.

The referral comes from a dispute in which Ferrari sued Mansory for infringement of unregistered Community design rights (UCDR). Mansory sells body kits that transform a €170,000 Ferrari 488 to look more like its €2.2 million cousin, the Ferrari FXX K supercar.

The relied-on designs were defined by Ferrari to include specific portions of the FXX K design, such as a V-shaped section of the car’s hood, in combination with part of the front spoiler and bumper.

Alleged infringement with Ferrari’s claimed design outlined in red

Ferrari lost at both first instance and on appeal. The courts ruled that no UCDR existed because (1) the claimed designs had not been originally disclosed or identified separately from the overall design; and (2) the designs were arbitrarily defined sections of the overall design and did not have autonomy. The Bundesgerichtshof, which appears inclined to agree with the lower courts, referred the following two questions to the CJEU [references to legal provisions omitted for legibility]:

1. Can unregistered Community designs in individual parts of a product arise as a result of disclosure of an overall image of a product …?
2. If Question 1 is answered in the affirmative: What legal criterion is to be applied for the purpose of assessing individual character … when determining the overall impression of a component part which—as in the case of a part of a vehicle’s bodywork, for example—is to be incorporated into a complex product? In particular, can the criterion be whether the appearance of the component part, as viewed by an informed user, is not completely lost in the appearance of the complex product, but rather displays a certain autonomy and consistency of form such that it is possible to identify an aesthetic overall impression which is independent of the overall form?

The Bundesgerichtshof seems to suggest that UCDR for part of a product should only exist if that part was disclosed on its own, or explicitly indicated within an image of the entire product. If the CJEU follows this view, design owners may need to make separate explicit disclosures of different parts of the product at the time of first disclosure.

A restrictive answer to the second question will have potential implications for the validity of the many thousands of registered designs already in existence for component parts of complex products. The judgment of the CJEU is not expected before the end of 2021.

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