The V on the hood

In 2014, Ferrari introduced the FXX K model in two versions hich are distinguished solely by the colour of the ‘V’ on the bonnet. In the first version, that ‘V’ is black apart from its low point, which is of the same colour as the basic colour of the vehicle concerned. In the second version, the ‘V’ is entirely black in colour.

Mansory Design produced “tuning kits” that could be used to modify a Ferrari 488 GTB so that its appearance came close to a Ferrari FXX K.

Ferrari found that the front kit was an infringement of its unregistered Community design, which consisted of the V-shaped element on the bonnet of the Ferrari FXX K, the fin-like element protruding from the centre of that element and fitted lengthways (‘the strake’), the front lip spoiler integrated into the bumper and the vertical bridge in the centre connecting the spoiler to the bonnet. That section is seen as a unit that defines the specific ‘facial features’ of that vehicle and also creates an association with an aircraft or Formula 1 car.

In the first and second instance, Ferrari lost. The German Federal Court of Justice now asked the ECJ about the demarcation between a complete product and a part of the product.

In legalese: Can unregistered Community designs in individual parts of a product arise as a result of disclosure of an overall image of a product in accordance with Article 11(1) and the first sentence of Article 11(2) of Regulation No 6/2002?

The ECJ in its judgment C-123/20 of 28. 10. 2021 on this: A design must be clearly identifiable. Otherwise, the circles specialised in the field cannot become aware of the relevant part of the product.

The representation of a Community design requires that the representation of a design makes it possible to identify that design clearly, so that economic operators obtain relevant information concerning the rights of third parties. Those considerations are also relevant to unregistered Community designs, since current and potential competitors of the designer or operator of the design at issue need, in that case also, clear and precise information. The subject matter of the protection, which contributes to a certain level of legal certainty in the context of the system of protection of unregistered Community designs, 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.

In this context, the ECJ has pointed out that, in order to assess whether the design claimed has individual character, it must be possible to compare it with another design. For this purpose, it is absolutely necessary to have a representation on which this claimed design can be precisely and reliably recognised.

Therefore, in order to assess the requirements for protection as a Community design, 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.

In the dispute between Ferrari and Mansouri, the German court must now examine whether the part or component in question constitutes a visible part of the product or of the complex product which is clearly delimited by lines, contours, colours, the shape or a particular surface structure.