The ECJ has now ruled on the conditions under which a company can rely on the protection of a non-registered design only on a partial area of a product, if the product as a whole has been made available to the public without any particular highlighting of just the partial area concerned (ECJ, judgment of October 28, 2021, Case C-123/20 – Ferrari).
Background
In the underlying case, Ferrari filed a lawsuit before the District Court Düsseldorf against a company offering “tuning” of vehicles, relying on a non-registered design on a part of its own vehicle body, namely the front hood. The District Court and also the Higher District Court of Düsseldorf dismissed the action. While it was possible in principle to invoke a non-registered design on only part of the car body, Ferrari would have had to show that the minimum requirement of a certain independence and unity of form had been met. It is true that Ferrari had made the vehicle in question accessible to the public as a whole, so that the part in question, namely the front hood, was also visible. However, for this reason alone, Ferrari could not rely on partial protection only for a specific element of the bodywork. For this to be the case, Ferrari would have had to particularly emphasize the affected part, for example in its advertising.
Judgment
The BGH referred the case to the ECJ. The latter now ruled that a non-registered design can also exist on a part of a product, provided that the appearance of this part is clearly recognizable and clearly visible in the illustration of the disclosure. The claimed part must be clearly delimited by lines, contours, colors, the shape or a particular surface structure. On the other hand, it is not necessary that the claimed part had been particularly emphasized in advertising.
Conclusion
The ruling is only partially convincing. If, in the case of a registered design, protection is not recognized only for certain parts of the design, this cannot actually be any different in the case of a non-registered design. Otherwise, the owner may, at his discretion, claim protection once for this part of the product and once for that part of the product. On the other hand, the fact that the claimed part must be clearly delimited is to be welcomed. However, it seems questionable whether this is sufficient for the required clarity as to what property rights exist.
However, protection for a non-registered design only lasts for 3 years and is more difficult to enforce than for a registered design.
Therefore, if you want to obtain protection for parts of your product, you are well advised to file a multiple application to secure the product as a whole as well as the relevant parts as a registered design.
