The Ferrari FXX-K and Its Implications on Unregistered Community Designs
In December 2014, Ferrari launched their new racing car, the Ferrari FXX K.[1] The FXX K is a high-end, $2.6 million[2] track-only car, meaning that it is not street legal.[3] The main feature of the car is the V-shaped element on the bonnet, which also gives the car the feeling of a Formula 1 car.[4] Masonry Design is a German-based company that specializes in the personalization of high-end cars.[5] In 2016, Masonry began to market tuning kits for the Ferrari 488 GTB (a $250,000 car)[6] which resembled the V-shaped bonnet and front bumper of the FXX K to give the Ferrari 488 GTB the appearance of the FXX K.[7] Ferrari subsequently sued Masonry in German court, alleging that their tuning kits violated three of Ferrari’s Unregistered Community Designs (“UCD”), namely the V-shaped element, the appearance of the front lip spoiler of the car, and the car in its entirety.[8] A UCD provides short-term protection (usually for three years) to novel designs without requiring formal registration.[9] UCDs protect a design’s appearance and features, including the lines, contour’s, colors, shape, texture, and materials of the product itself.[10] The owner of a UCD primarily enjoys protection against the “copying,” of their design, which essentially occurs whenever an imitation gives the same overall impression to an informed user as the UCD.[11] The rationale behind UCD’s is that such short-term and informal protection promotes practicality and efficiency.[12] For example, requiring companies to formally register products or designs in industries that produce large numbers of designs and products, such as fashion, clothing, or furniture design is burdensome and time-consuming.[13]
Ferrari’s claims were initially dismissed in their entirety.[14] Subsequently, the German Court of Appeal also dismissed Ferrari’s claims stating that a UCD only existed for the car in its entirety.[15] Ferrari then appealed to the German Federal Court, the Bundesgerichtshof[16] which referred the case to the European Court of Justice (“CJEU”).[17] The CJEU considered whether an image of the overall product could be interpreted as “making available to the public” only a part of the product.[18] If so, then the court had to determine to what extent the appearance of that part of the product must be independent in connection with the overall product from an individual character perspective.[19] The CJEU ruled that as long as the publication of the design image allows the relevant part of the product to be identifiable, the design has been “made available to the public.”[20] Furthermore, in line with the spirit of UCD’s, actors are not required to make every part of a product separately available to obtain a UCD.[21]. The case will now go back to the jurisdiction of the national court in Germany to determine whether the relevant designs relied on by Ferrari meet the requirements for obtaining protection as a UCD.[22]
The CJEU ruling sheds new light on the scope and application of UCD’s. Firstly, the ruling reinforces the spirit behind the concept of UCD’s, namely efficiency and informality.[23] As noted above, UCD’s provide short-term protection for designs without requiring the formality of formal registration.[24] The CJEU ruling also reinforces industry belief in UCD’s.[25] In turn, the reaffirmation in UCD’s spurs creativity and innovation, while also allowing brands to securely display their products without fearing infringement from other actors. In particular, the CJEU ruling is most beneficial for luxury brands that sell exclusivity, such as Ferrari. Inherently, such brands are prone and susceptible to mimicry and piracy. However, to ensure UCD protection in light of the CJEU ruling, brands should ensure that any design publications clearly and visibly identify all relevant parts of their products.[26] While some jurisdictions do not follow the EU approach and require that the relevant part has to be sold separately in order to be protected, EU harmonized law has always been consistent with the recent CJEU ruling.[27] Rather, this is only the first time that the CJEU has explicitly commented on whether UCD’s are applicable to parts of a design or product.[28]. Thus, Ferrari and other luxury brands working out of Europe will be more than content with the recent CJEU ruling.
Footnotes
