This article looks at the German Federal Court of Justice judgment (BGH, judgment of March 10 2022, docket no. I ZR 1/19) following the preliminary ruling by the CJEU in the Ferrari Front Kit case (CJEU, judgment of October 28 2021, docket no. C-123/20).
Facts
The star of the case is Ferrari’s top-of-the-range car model ‘FXX K’, which was presented to the public for the first time in a press release in December 2014. One of the photographs used showed the front view of the car and its typical ‘V’-shaped element on the front hood. Ferrari omitted to file for registered community designs (RCD) for the car’s design and the ‘V’-shaped element.
A tuning kit produced by a Mansory could be used to change the appearance of another less exclusive Ferrari car model in a way that its design came close to that of the ‘FXX K’. Particularly, a similarly looking ‘V’-shaped element was part of the tuning kit. Ferrari claimed an infringement of an unregistered community design (UCD) in the design of the ‘V’-shaped element of its ‘FXX-K’ car model.
Decision of the CJEU
After losing the first and second instance, Ferrari appealed to the BGH, which referred to the CJEU, inter alia, the question of whether a part of a product could be protected by an UCD if the part had only been published as part of the whole product. German courts responded negatively to this question. However, the CJEU ruled that such protection was possible and that Ferrari might rely on a UCD for the ‘V’-shaped element if the appearance of the ‘V’-shaped element was ‘clearly recognisable’ delimited by lines, contours, colours, shape or a special surface structure and thus itself creates an ‘overall impression’.
Decision of the BGH
Of course, the BGH followed this approach and referred the case back to the court of second instance for a final decision on the merits, taking into account the ruling of the CJEU.
In addition, the BGH also commented on passing-off claims based on unfair competition law. Such claims might be possible if the manufacturer of the original product can show the individual and distinctive character of a product (so-called wettbewerbliche Eigenart). According to the BGH, the individual and distinctive character of a part of a product cannot be assessed independently of the product.
Practical consequences and outlook
It is now clear that a part of a product can be protected by an UCD, even if the part had only been published as part of the product. However, such protection will only be granted if the part is clearly recognisable. The necessary demarcation might be established by appropriate design means in the design creation process. However, insignificant or arbitrarily delimited parts are not likely to enjoy protection.
Neither the CJEU nor the BGH, however, has addressed the question of whether parts of a RCD might also enjoy protection as a UCD individually. In the author’s opinion, the answer is yes. It should not really make any difference whether the part for which protection is sought is a part of a real product or of the graphic representation in the design register.
While the legal position of a manufacturer of original products is strengthened, it is nevertheless recommended to also file for parts of a product for an RCD. The scope of protection is greater and the term of protection is considerably longer. While an RCD enjoys absolute protection for up to 25 years, a UCD only enjoys protection against imitations for three years.
