Does the making available of a complex product give rise to the creation of unregistered Community designs for its components? In a decision published on March 4, 2020, the German Federal Supreme Court asks for the Court of Justice of the European Union’s guidance on this issue (German Federal Supreme Court, judgment of January 30, 2020, I ZR 1/19 – Front kit).
Art. 11 of the Community Design Regulation regulates the creation of unregistered Community designs. Such unregistered IP rights come into existence if a design, which meets the general requirements for design protection, is first being made available to the public within the European Union. Unregistered Community designs thus created expire after three years.
In December 2014, Ferrari, the plaintiff in the here discussed German court proceedings, issued a press release showing pictures of a new racing car. The defendant produced tuning kits for Ferrari cars. One of those kits strongly resembled a front section of Ferrari’s newly introduced racing car, including part of its bonnet as well as the bumper/spoiler. In the court proceedings, Ferrari argued that, by presentation of the entire new racing car in 2014, it (also) obtained protection for the afore-mentioned part of its front section as unregistered Community design. According to Ferrari, the defendant’s use of a very similar design for one of its tuning kits infringed this exclusive right.
While the first and second instance courts dismissed Ferrari’s action, the German Federal Supreme Court decided to obtain a preliminary ruling from the Court of Justice of the European Union on the question whether or not the presentation of a complex product can give rise to the protection as unregistered Community designs for its parts. In its decision, the court already indicated that it tends to negate this question, at least if the respective part is not particularly designated in the complete representation. It remains to be seen if the European court will concur.
In its decision, the German Federal Supreme Court explicitly confirms the possibility to obtain unregistered Community design protection for product parts. It only indicates that such protection requires that the respective part is being made publicly available as such, and not only within the representation of the complex product. Consequently, designers and producers of complex products can broaden their IP protection by not disclosing only the final product, but also its individual (and most important) parts.