Case C‑123/20
Ferrari SpA
v
Mansory Design & Holding GmbH
and
WH
(Request for a preliminary ruling from the Bundesgerichtshof)
Judgment of the Court (Fifth Chamber), 28 October 2021
(Reference for a preliminary ruling – Regulation (EC) No 6/2002 – Community designs – Articles 4, 6 and 11 – Infringement proceedings – Unregistered Community design – Appearance of a part of a product – Conditions for protection – Component part of a complex product – Individual character – Act of making available to the public)
1. Community designs – Unregistered Community designs – Objective of protection
(Council Regulation No 6/2002, recitals 16 and 25)
(see paragraph 32)
2. Community designs – Unregistered Community designs – Making available – Concept – Distribution to traders operating in the sector
(Council Regulation No 6/2002, Art. 11(2))
(see paragraphs 36, 37)
3. Community designs – Unregistered Community designs – Making available – Making available of a part of a product or a component part of a complex product – Conditions for protection – Clearly identifiable appearance of that part or component part – Individual character – Assessment – Part or component part constituting a visible and clearly defined section
(Council Regulation No 6/2002, Arts 3(a) and (c), 4(2), 6(1), and 11(2))
(see paragraphs 38-43, 48-52, operative part)
4. Community designs – Conditions for protection – Individual character – Design producing a different overall impression on the informed user from that produced by the earlier design – Determination of the overall impression in relation to one or more earlier designs, taken individually
(Council Regulation No 6/2002, Art. 6)
(see paragraphs 45-47)
Résumé
On 2 December 2014, Ferrari SpA presented to the public for the first time the top-of-the-range FXX K car model, in a press release containing two photographs showing, respectively, a side view and a front view of that vehicle.
Since 2016, Mansory Design & Holding GmbH (‘Mansory Design’), established in Germany, has produced and marketed sets of personalisation accessories, known as ‘tuning kits’, designed to alter the appearance of another road-going Ferrari model, produced in a series, in such a way as to make it resemble the appearance of the Ferrari FXX K.
Ferrari brought an action for infringement and related claims against Mansory Design, on account of an alleged infringement of the rights conferred by three unregistered Community designs in respect of parts of the FXX K model, namely components of its bodywork. Those Community designs arose at the time of the publication of the press release of 2 December 2014.
The Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany) dismissed those claims in their entirety.
Following an appeal brought before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany), that court dismissed Ferrari’s appeal, holding that the first and second designs claimed never existed, since Ferrari had not shown that the minimum requirement of a certain autonomy and consistency of form had been satisfied, whereas the third design claimed did indeed exist, but had not been infringed by Mansory Design.
It was in that context that the Bundesgerichtshof (Federal Court of Justice, Germany), before which Ferrari brought an appeal, asked the Court of Justice to clarify whether the making available to the public of images of a product, such as the publication of photographs of a car, could lead to the making available to the public of a design on a part or a component part of that product and, if so, to what extent the appearance of that part or component part must be independent of the product as a whole in order for it to be possible to examine whether that appearance has individual character.
In its preliminary ruling, the Court holds, inter alia, that EU law must be interpreted as meaning that the making available to the public of images of a product, such as the publication of photographs of a car, results in the making available to the public of a design on a part of that product or on a component part of that product, as a complex product, provided that the appearance of that part or component part is clearly identifiable at the time that design is made available. (1)
Findings of the Court
In the first place, the Court notes that the material conditions required for the protection of a Community design to arise, whether registered or not, namely novelty and individual character, are the same for both products and parts of a product. (2) Provided that those material conditions are satisfied, the formal condition for giving rise to an unregistered Community design is that of making available to the public within the meaning of Article 11(2) of Regulation No 6/2002. (3) In order for the making available to the public of the design of a product taken as a whole to entail the making available of the design of a part of that product, it is essential that the appearance of that part is clearly identifiable when the design is made available. However, that does not imply an obligation for designers to make available separately each of the parts of their products in respect of which they seek to benefit from unregistered Community design protection.
In the second place, the Court points out that the concept of ‘individual character’, within the meaning of Article 6 of Regulation No 6/2002, (4) governs not the relationship between the design of a product and the designs of its component parts, but rather the relationship between those designs and other earlier designs. In order for it to be possible to examine whether the appearance of a part of a product or a component part of a complex product satisfies the condition of individual character, it is necessary for that part or component part to constitute a visible section of the product or complex product, clearly defined by particular lines, contours, colours, shapes or texture. That presupposes that the appearance of that part or component part is capable, in itself, of producing an overall impression and cannot be completely lost in the product as a whole.