Does disclosure of the image of an entire product give rise to unregistered Community design rights in respect of individual components or parts of the product? The Advocate General says „Yes!“ in Case C-123/20

[Gert Würtenberger]

Under certain prerequisites Community Design Law grants rights to designs which are not registered as Community designs. These rights are valid for a period of three years as from the date on which the design was first made available to the public within the Community (Article 11 Para. 1 of Council Regulation (EC) No. 6/2002 – see here) provided the design fulfills the general requirements for design protection, namely novelty (Art. 5), individual character (Art. 6), the design is not dictated by technical functions or is of interconnections (Art. 8) and is not contrary to public policy or morality (Art. 9).

In the subject case, the German Federal Court of Justice asked the CJEU whether a part of the body of a vehicle, i.e. a component of a complex product, could be granted protection as an unregistered Community design. In the affirmative, the CJEU was requested to lay down the conditions herefor.

In 2016, a manufacturer of tuning components presented a converted Ferrari 488 GTB at the Geneva Motor Show. The exhibited converted Ferrari was equipped with a V-shaped front kit. As Ferrari was of the opinion that the front kit infringed its unregistered Community designs, it sued the tuning components manufacturer. Since the Regional Court and the Higher Regional Court of Düsseldorf rejected Ferrari’s claims, Ferrari filed an appeal on points of law with the German Federal Court of Justice seeking guidance on the interpretation of Art. 11 of Regulation (EC) No. 6/2002 as set out above.

The German Federal Court of Justice stayed the proceedings and asked the CJEU for a preliminary ruling. The German court, in particular, wanted to know whether the component part needs to have a certain degree of “autonomy and consistency of form” within the complex product of which it is a part in the sense that, in the perception of the informed user, it is apt to establish an individual overall aesthetic impression independent of the form of the complex product.

The Advocate General is of the opinion that individual parts of a complex product may be granted protection as unregistered Community designs under two conditions:

– the appearance of the part of the product shall be “clearly identifiable” and

– if made available through a photograph, such part shall be “clearly visible”.

With regard to the second question whether the individual character of a “partial design” must be autonomous and consistent, the Advocate General expressed a negative view as this would introduce additional criteria into the examination of unregistered design rights which are not supported by the Regulation.

It is now up to the CJEU to answer the questions raised by the German Federal Court of Justice in light of the Advocate General’s opinion. While the latter is not binding, the Court very often follows opinions of the Advocate General.

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