The Unregistered Community Design – the importance of clear pictures at product launches

Design protection in the EU

Sole right to the design of a product may be protected in the EU in three ways: (i) a national design registration, (ii) a registered Community Design (RCD), or (iii) an unregistered protection for three years from the disclosure in the EU. This presumes that the design fulfils the substantial requirements, namely that it is new and differs sufficiently from earlier known or registered design.

The unregistered Community Design (UCD) was introduced in 2002 with the Community Design Regulation, as a complement to hinder copying of designs during a short period of time. One had in mind industries with shorter periods of time between new collections or products, or where the number of designed products or product parts would lead to unreasonable costs to register each individual design. The UCD however only refers to copies. In Sweden, for example, the design of kitchen tools and mobile cases has been afforded protection as UCD and copies have been stopped.

Design protection for parts of a product or component parts of complex products

In a complex product which consists of several component parts, the design of the entire product or the individual component parts or a combination may have a sole right provided that the entire design or the individual component parts differ sufficiently from earlier known designs and is visible under normal use of the complex product. In the vehicle industry it is common to protect the design of individual component parts, as hub caps and spoilers. There are about 28 000 RCD within the category part and component parts to vehicles.

The Court of Justice decision in a case about design of Ferrari car

The design of spoilers was the subject of a case in the Court of Justice of the EU (CJEU) last year, case C-123/20 Ferrari SpA vs  Mansory Design Holding GmbH, ruling of October 28, 2021. Ferrari claims in an infringement case in Germany that Mansory has copied their UCD to various parts such as the spoiler of one of their car models FXX K.

Ferrari launched this model through a press release in 2014 with two photographs of the car from two different angles. The German court considered that Ferrari cannot claim protection for individual parts, as the spoiler, as the picture in the press release was for the entire car, not individual parts. Ferrari appealed and the German court sent two questions to the CJEU. The first question is whether a publication of the entire product may also arise UCD protection for individual parts of that product. If yes, what legal criteria are to be considered when assessing the individual character of a component part of a complex product “…when determining the overall impression of a component part which – as in the case of a part of a vehicle’s bodywork, for example – is to be incorporated into a complex product? In particular, can the criterion be whether the appearance of the component part, as viewed by an informed user, is not completely lost in the appearance of the complex product, but rather displays a certain autonomy and consistency of form such that it is possible to identify an aesthetic overall impression which is independent of the overall form?”

The CJEU states as an answer to the first question, that the disclosure of a product may include disclosure of a part of the product, provided that you may clearly identify the appearance of this part. There is no requisite, as the German court considered, to disclose each individual part as such. The court refers here both to part of a product, as the handle of a mug, and component part of a complex product, as wheels of a car.

On the second question the court states that to be able to assess the individual character it is “…necessary that the part or component part in question constitute a visible section of the product or complex product, clearly defined by particular lines, contours, colours, shapes or texture.”

Summary and recommendations

To be able to claim UCD you must show that it has been disclosed within the EU, that this has occurred under such circumstances that one may reasonably presume that it has become known within the relevant sector, in this case the car industry, in the EU and when this occurred. It is thus important to save documentation about product launches, how and when these occurred. Only a picture and text on a web site is likely not sufficient unless there is supportive evidence on the time of the uploading of this.

Moreover, the CJEU ruling in the Ferrari case puts a demand on the pictures when a product is launched, that there are clear pictures from different angles, so that the part or component part that one considers new and in possession of individual character, is clearly visible and distinctive from the entire design. Here one might need to work with different colours, markings, or other ways to make it possible for the viewer to see the appearance of this particular part. If this is not possible, one should also publish pictures of the individual part.