The matter at hand

Sports car manufacturer Ferrari presented images of a new sports car, the FXX K, to the public in a press release. Mansory Design specialises in ‘tuning’ of high-end cars. It produced and marketed ‘tuning kits’ to make the appearance of a Ferrari 488 GTB look like a Ferrari FXX K. These kits contained parts of the front of the Ferrari FXX K.

Ferrari claimed that the marketing of those components by Mansory Design infringes its Unregistered Community Design in parts of the FXX K.

The referring court, the Bundesgerichtshof (Federal Court of Justice of Germany), in essence, raised the questions of whether the making available to the public, within the meaning of Article 11(2) of Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs 6/2002, of the image of a product as a whole, also amounts to the making available of designs of parts of that product, and, if so, to what extent the appearance of a part of a product must be autonomous in relation to the product in its entirety.

The judgment of the ECJ

In answering these questions, the ECJ first reiterates that it must be observed that in accordance with Article 11(2) of Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs 6/2002, a design is made available to the public “if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community” (paragraph 36).

With reference to the opinion of the Advocate General, the ECJ considers that if a product is made available in its entirety, for the making available of parts of that product it is essential that “the appearance of that part is clearly identifiable when the design is made available” (paragraph 38).

This, on the one hand, does not “imply an obligation for designers to make available separately each of the parts of their products in respect which they seek to benefit from unregistered Community design protection” (paragraph 40). However, on the other hand, it does require that “the part of the product or component part of the complex product at issue must be visible and defined by features which constitute its particular appearance, namely by particular lines, contours, colours, shapes and texture. That presupposes that the appearance of that part of the product or that component part of a complex product is capable, in itself, of producing an overall impression and cannot be completely lost in the product as a whole” (paragraph 50).

As a consequence, the ECJ concludes that Article 11(2) of Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs 6/2002 must be interpreted as meaning that the making available to the public of images of a product entails the making available to the public of a design of a part of that product, “provided that the appearance of that part or component part is clearly identifiable at the time the design is made available. In order for it to be possible to examine whether that appearance satisfies the condition of individual character referred to in Article 6(1) of that regulation, it is necessary that the part or component part in question constitute a visible section of the product or complex product, clearly defined by particular lines, contours, colours, shapes or texture” (paragraph 52).