Fiat Chrysler lost a trademark dispute over JEEP in Japan

One new interesting trademark dispute, reported by Masaki Mikami, was solved by the Japan Patent Office.

The case at hand concerns a new trademark application in Japan filed by an individual for the sign JEEPER in class 8 –  hand tools.

Against this application, an opposition was filed by the automotive manufacturer Fiat Chrysler. The ground was an earlier mark JEEP for which the company claimed reputation amongst Japanese consumers due to which arising of confusion was possible.

The Patent Office admitted that the earlier mark JEEP has some level of reputation in the country but disputed the fact that it covers the above-mentioned goods in class 8.

According to the Office, both signs were not similar enough from the visual and phonetic points of view. Conceptually there was no similarity too because the mark applied for had no specific meaning while the earlier mark was associating with 4×4 vehicles.

Based on this the opposition was dismissed in its entirety.

Whether elements of Ferrari can be protected as a European design?

The Advocate General of the European Union H. SAUGMANDSGAARD ØE has given an opinion on Case C‑123/20 Ferrari SpA v Mansory Design & Holding GmbH.

In brief, this case target the question whether elements of an entire design can be protected as unregistered European design. The case has the following background:

Ferrari is a racing car and sports car manufacturer established in Italy. Its top-of-the-range FXX K model, which has not been approved for use on the road, is intended solely to be driven on the track.

Ferrari first presented the FXX K to the public in a press release dated 2 December 2014. That press release included the following two photographs, showing, respectively, a side view and a front view of the vehicle:

The Ferrari FXX K, produced in limited numbers, exists in two versions, which are distinguished solely by the colour of the ‘V’ on the bonnet. In the first version, illustrated by the photographs reproduced above, that ‘V’ is black apart from its low point, which is the same colour as the basic colour of the vehicle. In the second version, the ‘V’ is entirely black in colour.

Mansory Design, of which WH is the chief executive officer, is an undertaking that specialises in the personalisation (known as ‘tuning’) of high-end cars. Mansory Design and WH are both established in Germany. Since 2016 Mansory Design has produced and marketed sets of personalisation accessories (known as ‘tuning kits’) designed to alter the appearance of the Ferrari 488 GTB (a road-going model, produced in a series, available since 2015) in such a way as to make it resemble the appearance of the Ferrari FXX K.

Mansory Design thus offers a number of ‘tuning kits’ which serve to transform the appearance of the Ferrari 488 GTB: the ‘front kit’, ‘rear kit’, ‘side set’, ‘roof cover’ and ‘rear wing’. In addition, it offers two versions of the ‘front kit’, reflecting the two versions of the Ferrari FXX K: on the first version, the ‘V’ on the bonnet is black apart from its low point, while on the second version it is entirely black.

A complete conversion of the Ferrari 488 GTB involves replacing a large portion of the visible body panels. In March 2016, at the International Motor Show in Geneva (Switzerland), Mansory Design displayed a vehicle featuring that conversion under the name Mansory Siracusa 4XX.

Ferrari maintains that the marketing of those ‘tuning kits’ by Mansory Design constitutes an infringement of the rights conferred by one or more unregistered Community designs of which it is the holder.

Principally, Ferrari asserted that the marketing of the ‘front kits’ constitutes an infringement of the first unregistered Community design, covering the appearance of the part of its model FXX K consisting of the V-shaped element on the bonnet, the fin-like element protruding from the centre of that element and fitted lengthways (the ‘strake’), the front lip spoiler integrated into the bumper and the vertical bridge in the centre connecting the spoiler to the bonnet. That section is seen as a unit that defines the specific ‘facial features’ of that vehicle and also creates an association with an aircraft or Formula 1 car. According to Ferrari, that unregistered Community design arose at the time of the publication of the press release of 2 December 2014.

In the alternative, Ferrari claimed to be the holder of a second unregistered Community design for the appearance of the front lip spoiler, which arose at the time of the publication of the press release or, at the latest, on the release of a film entitled ‘Ferrari FXX K – The Making Of’ on 3 April 2015, and which Mansory Design also infringed by selling its ‘front kits’.

In the further alternative, Ferrari based its action on a third unregistered Community design for the presentation of the Ferrari FXX K as a whole, as revealed in another photograph of the vehicle, shown in an oblique view, which also appeared in the press release of 2 December 2014.

Ferrari also claimed, as regards the ‘kits’ offered for sale on the territory of the Federal Republic of Germany, rights based on protection against imitation under the law on unfair trading practices.

At first instance, Ferrari sought an injunction throughout the European Union against the making, offering, putting on the market, importing, exporting, using or stocking of the accessories at issue, and made a number of associated requests (provision of accounting documents, recall and destruction of the products and the award of financial compensation). The Regional Court, Germany dismissed those claims in their entirety.

Before the appellate court, Ferrari stated that its requests for an injunction and its requests relating to the recall and destruction of the products, in so far as they were based on the rights conferred by the Community designs on which it relied, had become devoid of purpose, as the rights in question were to expire on 3 December 2017. (3) On the other hand, Ferrari maintained, in particular, its claims for compensation.

That court dismissed Ferrari’s appeal. In particular, it held that Ferrari’s claims based on the alleged unregistered Community designs were unfounded. According to that court, the first unregistered Community design claimed, relating to the part of the Ferrari FXX K described in point 23 of this Opinion, was non-existent, since Ferrari had not shown that the minimum requirement of a ‘certain autonomy’ and a ‘certain consistency of form’ was satisfied. Ferrari merely referred to an arbitrarily defined section of the vehicle. The second unregistered Community design claimed by Ferrari, covering the front lip spoiler, was also non-existent, on the ground that it too failed to satisfy the ‘consistency of form’ requirement. As to the third design, covering the overall appearance of the Ferrari FXX K, it did exist, but it had not been infringed by Mansory Design.

Ferrari then lodged an appeal on a point of law, which was declared admissible by the Federal Court of Justice. That court considers that the outcome of that appeal, as concerns the claims based on infringement of the rights allegedly conferred by the unregistered Community designs claimed by Ferrari, depends on the interpretation of Regulation No 6/2002.

More specifically, it is necessary to clarify the conditions in which the appearance of part of a product may, in accordance with that regulation, enjoy protection as an unregistered Community design.

In that context, the referring court asks, first, whether the making available to the public, within the meaning of Article 11(2) of Regulation No 6/2002, of the image of a product in its entirety also amounts to the making available of the designs of the parts of that product.

Assuming that that is the case, the referring court asks, second, whether the appearance of a part of the product must, in order to be capable of constituting a separate design, separate from the overall appearance of the product, present, as the appellate court held, a ‘certain autonomy’ and a ‘certain consistency in form’, so that it possible to establish that the appearance of that part is not completely lost in the appearance of that product and presents, on the contrary, an overall autonomous impression by comparison with the form as a whole.

In those circumstances, the Federal Court of Justice decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1) Can unregistered Community designs in individual parts of a product arise as a result of disclosure of an overall image of a product in accordance with Article 11(1) and the first sentence of Article 11(2) of Regulation No 6/2002?

(2) If Question 1 is answered in the affirmative:

What legal criterion is to be applied for the purpose of assessing individual character in accordance with Article 4(2)(b) and Article 6(1) of Regulation (EC) No 6/2002 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 Advocate’s opinion:

1) Article 11(2) of Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted as meaning that the making available to the public of the full design of a product, such as the appearance of a vehicle, also entails the making available to the public of the design of a part of that product, such as the appearance of certain elements of the bodywork of that vehicle, provided that the latter design is clearly identifiable at the time when that design is made available.

2) Article 3(a) of Regulation No 6/2002 must be interpreted as meaning that a visible section of a product, defined by particular lines, contours, colours, shape or texture, constitutes the ‘appearance of […] a part of a product’, within the meaning of that provision, which may be protected as a Community design. There is no need, when assessing whether a given design complies with this definition, to apply additional criteria such as ‘autonomy’ or ‘consistency of form’.

Mercedes won a trademark dispute in Japan

Daimler AG filed an application for the following trademark in class 12 – parts for vehicles for locomotion by land, air, water or rail:

The Japan Patent Office refuse to register this mark based on a similarity with an earlier trademark for STAR- PARTS in class 35 – retail services or wholesale services for automobiles, parts, and accessories.

The German company appealed and as a result won the dispute. According to the Board of Appeal both marks were not similar. The reason for this was the fact that STARPARTS is not a dominant element in the later trademark. The leading element was the words Mercedes-Benz, a well-know brand for German luxury cars with a long history.

Although this seems like a real success for Daimler AG now, what will be the result in the future taking into account that the earlier mark STAR-PARTS is registered for spare parts for vehicles among others. This is a scenario, for example, where the earlier mark is not so famous but can become such one as a result of the Daimler use of their own combined mark in the market.

Source: Masaki MIKAMI – Marks IP Law Firm

Sports cars are not just cars when it comes to trademarks – an EU Court’s decision

The General Court of the European Union has recently ruled in Case T‑677/19, Polfarmex S.A v EUIPO.

This case concerns an EU trademark SYRENA registered in 2011 for the following goods:

  • Class 9: ‘Computer and video game programs and software, none of the aforesaid goods relating to the aeronautical field, and in particular helicopters and rotorcrafts’;
  • Class 12: ‘Motor vehicles for locomotion by land and parts therefor (included in Class 12)’;
  • Class 28: ‘Games and playthings, model vehicles; scale model vehicles made of all materials, in particular paper model vehicles and die-cast model vehicles or plastic model vehicles’.

In 2016, Polfarmex filed an application for revocation of this mark based on lack of a genuine use for a period of 5 years.

The EUIPO revoked the mark for all goods with an exception of class 12 – cars.

Although there weren’t many invoices for sales of cars under this mark, the Office concluded that this is normal because the mark had been used only for sport cars. The market and demand of these cars is limited compare with the traditional vehicles. Due to this fact, advertisement and preparation related to the mark was deemed as sufficient. The decision was appealed.

According to the Court:

As is apparent from the case-law, it is common knowledge that the market for high-end sports cars with technical specifications that are not intended for normal, everyday road use and the price of which exceeds that of most private use cars is often characterised by relatively low demand, by production to specific order and by the sale of a limited number of vehicles. The Court held that, in such circumstances, the provision of accounting documents setting out sales figures or invoices is not necessary for the purposes of establishing genuine use of the mark in question. Further, the Court noted that publications demonstrated that the mark in question was the subject matter of public discussion in anticipation of a revival of production and sale of a car model bearing the mark in question.

 It follows that, having regard to the specific features of the relevant market, duly taken into account by the Board of Appeal when it relied on the case-law cited in paragraph 70 above, the evidence produced by the intervener shows the existence of various preparatory tasks and advertising efforts in relation to the SYRENA Meluzyna R model. Moreover, it shows, as contended by EUIPO, not only that the car was about to be marketed, but also that it was available to order.

To the question to what extent sport cars can cover the whole cattegory of vehichles, however, the General Court disagreed with the EUIPO.

According to the Court:

Contrary to EUIPO’s claim, racing cars are capable of constituting a coherent subcategory, for, unlike cars, their purpose is not the same as that of vehicles intended to carry a driver and passengers. Those cars, as acknowledged by the Board of Appeal in paragraph 61 of the contested decision, are not intended to be driven on public roads and such use is even prohibited on account of the absence of type approval. Their purpose is therefore different from that of other cars.

It follows that, to the extent that genuine use of the mark has been established in relation to racing cars alone, which constitute an independent subcategory within the meaning of the case-law cited in paragraph 116 above, the Board of Appeal was wrong to find that genuine use had been shown in respect of cars in Class 12. On that basis, the second complaint of the third plea and the fourth plea must be upheld and the contested decision must be annulled to the extent that it upheld the registration of the contested mark in respect of ‘cars’ in Class 12, with the exception of ‘racing cars’, in respect of which registration must be upheld.

Ferrari won an important lawsuit in the EU for its TESTAROSSA trademark and for the entire industry of old luxury cars

The European Court has ruled in joined cases C‑720/18 и C‑721/18 Ferrari SpA v DU.

These cases are important especially for manufacturers of luxury vehicles because they shed a light on the issue of old famous trademarks that are not completely used from the companies anymore.

The cases background is as follow:

Ferrari is the proprietor of the trade mark TESTAROSSA.

That mark was registered with the World Intellectual Property Organisation on 22 July 1987 as international trade mark 515 107 in respect of the following goods in Class 12 : ‘Vehicles; apparatus for locomotion by land, air or water, in particular motor cars and parts thereof.’

The same mark was also registered with the German Patent and Trade Mark Office on 7 May 1990 as mark No 11158448 for the following goods in Class 12: ‘Land vehicles, aircraft and water vehicles and parts thereof; motors and engines for land vehicles; car components, i.e. tow bars, luggage racks, ski racks, mudguards, snow chains, air deflectors, head restraints, seat belts, child safety seats.’

Since the Regional Court, Düsseldorf, Germany ordered the cancellation, on grounds of revocation, of the two Ferrari marks referred to in paragraphs 14 and 15 of this judgment (together ‘the marks at issue’) on the ground that, during a continuous period of five years, Ferrari had not made genuine use of those marks in Germany and in Switzerland, in respect of the goods for which they are registered, Ferrari appealed against the decisions of that court before the Higher Regional Court, Düsseldorf, Germany.

The referring court states that Ferrari sold a sports car model under the designation ‘Testarossa’ between 1984 and 1991 and sold the follow-up models 512 TR and F512 M until 1996. According to the referring court, in 2014, Ferrari produced a one-off piece with the model designation ‘Ferrari F12 TRS’. It is apparent from the order for reference that, during the period relevant to the assessment of the use of the marks at issue, Ferrari used those trade marks to identify replacement and accessory parts of very high-priced luxury sports cars previously sold under those trade marks.

Taking the view that the use of a mark does not always have to be extensive in order to be genuine, and also taking into account the fact that Ferrari used the marks at issue in respect of high-priced sports cars which are typically only produced in small numbers, the referring court does not share the view expressed by the court of first instance that the extent of use demonstrated by Ferrari is not sufficient to establish genuine use of those marks.

However, according to the referring court, it is doubtful whether account may be taken of such particular features in the case of the marks at issue, since those marks were registered not in respect of high-priced luxury sports cars, but generally in respect of motor cars and parts thereof. The referring court takes the view that, if account is taken of whether the marks at issue have been put to genuine use in the mass market for motor cars and parts thereof, it would be necessary to find at the outset that no such use has been made of them.

The referring court adds that Ferrari claims to have resold, after inspection, used vehicles bearing the marks at issue. The court of first instance did not regard that as renewed use of the marks at issue since, following the first release onto the market of the goods bearing those marks, the rights which Ferrari derived from them had been exhausted and it was not in a position to prohibit the resale of those goods.

Since the concept of ‘right-maintaining use of a mark’ cannot go further than that of right-infringing use of a mark, acts of use which the proprietor of that mark cannot prohibit third parties from performing, cannot, according to the court of first instance, constitute right-maintaining use of that mark. For its part, Ferrari claimed that the sale of used vehicles bearing the marks at issue thereby comprised a renewed commitment in respect of the vehicle concerned and therefore constituted a renewed right-maintaining use of the marks at issue.

The referring court adds that, in the main proceedings, Ferrari claimed that it provided replacement and accessory parts in respect of the vehicles bearing the marks at issue and offered maintenance services for those vehicles. In that regard, the referring court states that the court of first instance found that, between 2011 and 2016, turnover of approximately EUR 17 000 was achieved with the replacement parts actually sold by Ferrari in respect of the vehicles bearing the marks at issue, which was not sufficient to constitute right-maintaining use of the marks at issue. It is true that there are only 7 000 vehicles worldwide bearing the marks at issue. However, that fact alone does not explain the small quantities of replacement parts sold under the marks at issue.

While being aware of the case-law arising from the judgment of 11 March 2003, Ansul (C–40/01, EU:C:2003:145), the referring court observes, first, that it follows from the ‘Guidelines for examination of European Union trade marks’ (Part C, Section 6, No 2.8) of the European Union Intellectual Property Office (EUIPO) that the application of that case-law should remain exceptional. 

Second, the referring court takes the view that there is a particular feature in the main proceedings, since the marks at issue also claim protection in respect of parts of motor cars, so that the application of the case-law arising from the judgment of 11 March 2003, Ansul (C–40/01, EU:C:2003:145) would mean that the marks at issue which have been used in respect of parts of motor cars are also used in respect of the motor cars, even if those motor cars have not been sold under those marks for more than 25 years. Furthermore, the question arises of whether genuine use of a mark can result from the fact that its proprietor still holds replacement parts and offers services in respect of the goods previously sold under that mark, but does not use that trade mark to designate those parts or services.

In relation to the territorial extent of the use required by Article 12(1) of Directive 2008/95, the referring court notes that that provision requires use ‘in the Member State concerned’. Relying on the judgment of 12 December 2013, Rivella International v OHIM (C–445/12 P, EU:C:2013:826, paragraphs 49 and 50), it notes that the Court has held that the use of a trade mark in Switzerland does not prove genuine use of the trade mark in Germany. However, the case-law of the Federal Court of Justice, Germany assumes that the Convention of 1892 is still in force and is to be applied by the German courts, having regard to Article 351 TFEU. Such an application could, nevertheless, give rise to difficulties, in the case of a German trade mark which, although it cannot be cancelled under German law, cannot be relied on in opposition proceedings to preclude the registration of a trade mark of the European Union either.

Lastly, the referring court observes that, in the main proceedings, the question also arises as to which party must bear the burden of proving genuine use of a trade mark. In accordance with German case-law, the general principles of civil procedure are to be applied, which means that, also in the case of an application for revocation for non-use of a registered mark, it is the party bringing the action which bears the burden of proving the facts on which that application is based, even if these facts are negative facts, such as the lack of use of a mark.

In order to take into account the fact that the precise circumstances of the use of a mark are often beyond the knowledge of the applicant for revocation, German case-law imposes on the proprietor of the trade mark concerned a secondary burden to explain in a substantiated and comprehensive manner how it has used it. Once the proprietor of the trade mark has discharged that burden of explanation, it is for the applicant for the cancellation of that mark to disprove those explanations.

The application of those principles to the main proceedings would mean that a ruling could be given on those proceedings without an evidentiary hearing, since Ferrari has sufficiently explained in a substantiated manner the acts of use which it performed and has also offered proof, although DU confines himself to contesting Ferrari’s submission without offering any proof of his own. He would therefore have to be regarded as not having discharged the burden of proof. If, on the other hand, that burden of proof was to lie with Ferrari, as the proprietor of the marks at issue, the proof offered by it would have to be examined.

In those circumstances, the Higher Regional Court, Düsseldorf decided to stay the proceedings and to refer the following questions, which are identical in both cases, to the Court of Justice for a preliminary ruling:

‘(1) When assessing the question of whether use is genuine in terms of nature and extent within the meaning of Article 12(1) of [Directive 2008/95] in the case of a trade mark which is registered in respect of a broad category of goods, in this case land vehicles, in particular motor cars and parts thereof, but is actually only used in respect of a particular market segment, in this case high-priced luxury sports cars and parts thereof, is account to be taken of the market for the registered category of goods overall or may account be taken of the particular segment? If the use in respect of the particular market segment is sufficient, is the trade mark to be maintained in relation to that market segment in cancellation proceedings due to revocation?

(2) Does the sale of used goods which have already been released onto the market by the trade mark proprietor in the European Economic Area constitute use of the trade mark by the trade mark proprietor within the meaning of Article 12(1) of [Directive 2008/95]?

(3) Is a trade mark which is registered not only in respect of a product, but also in respect of parts of that product also used in a right-maintaining manner in respect of the product if that product is no longer sold, but there are still sales of trademarked accessory and replacement parts for the trademarked product sold in the past?

(4) When assessing whether there is genuine use, is consideration also to be given to whether the trade mark proprietor offers services which do not use the trade mark but are intended for the goods already sold?

(5) When examining the use of the trade mark in the Member State concerned (in this case Germany) within the meaning of Article 12(1) of [Directive 2008/95], pursuant to Article 5 of the [Convention of 1892], are uses of the trade mark in Switzerland also to be taken into consideration?

(6)  Is it compatible with [Directive 2008/95] to require the trade mark proprietor against which action is being taken due to revocation of the trade mark to comprehensively explain the use of the trade mark, but to impose the risk of evidence not being furnished on the cancellation applicant?’

The Court’s decision:

1.  Article 12(1) and Article 13 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a trade mark registered in respect of a category of goods and replacement parts thereof must be regarded as having been put to ‘genuine use’ within the meaning of Article 12(1), in connection with all the goods in that category and the replacement parts thereof, if it has been so used only in respect of some of those goods, such as high-priced luxury sports cars, or only in respect of replacement parts or accessories of some of those goods, unless it is apparent from the relevant facts and evidence that a consumer who wishes to purchase those goods will perceive them as an independent subcategory of the category of goods in respect of which the mark concerned was registered.

2.   Article 12(1) of Directive 2008/95 must be interpreted as meaning that a trade mark is capable of being put to genuine use by its proprietor when that proprietor resells second-hand goods put on the market under that mark.

3.  Article 12(1) of Directive 2008/95 must be interpreted as meaning that a trade mark is put to genuine use by its proprietor where that proprietor provides certain services connected with the goods previously sold under that mark, on condition that those services are provided under that mark.

4.  The first paragraph of Article 351 TFEU must be interpreted as allowing a court of a Member State to apply a convention concluded between a Member State of the European Union and a non-member State before 1 January 1958 or, for States acceding to the European Union, before the date of their accession, such as the Convention between Switzerland and Germany concerning the Reciprocal Protection of Patents, Designs and Trademarks, signed in Berlin on 13 April 1892, as amended, which provides that the use of a trade mark registered in that Member State in the territory of the non-member State must be taken into consideration in order to determine whether that mark has been put to ‘genuine use’ within the meaning of Article 12(1) of Directive 2008/95, until such time as one of the steps referred to in the second paragraph of Article 351 TFEU makes it possible to eliminate any incompatibilities between the TFEU and that convention.

5. Article 12(1) of Directive 2008/95 must be interpreted as meaning that the burden of proof that a trade mark has been put to ‘genuine use’, within the meaning of that provision, rests on the proprietor of that mark.

Land Rover lost a lawsuit regarding 3D trademarks in the UK

Jaguar Land Rover lost a lawsuit in the UK regarding its attempt to register the following 3D trademarks in class 12 for its off-read vehicle models Land Rover Series 1, Series 2, Defender 90 and Defender 110:

Although the UKIPO allowed these application initially, there was an opposition by Ineos Industries after that on the following grounds:

  • the shapes were not capable of being registered;
  • lack of inherent distinctiveness/descriptive in nature;
  • the shapes had become customary in the established practice of trade of the goods;
  • the shapes resulted from the nature of the goods themselves and/or are necessary to achieve a technical result and/or give substantial value to the goods themselves;
  • registration would be contrary to public policy; and
  • that the applications were filed in bad faith.

The UKIPO decided that these 3D forms cannot constitute trademarks. The arguments for this position were:

  1. The vehicle models as depicted lack of distinctive character. Although some of their element can be perceived as unique compared with other similar models, as a whole the design of the cars are classic one for off-read vehicles. The ordinary consumer will not identified them as separate trademarks.
  2. The submitted evidence for acquired distinctiveness is not sufficient to prove that consumers perceive these 3D forms as a source of trade origin apart from the word marks Land Rover and Defender.
  3. According to the Office it is possible these applications to being filed in bad fight. It is obvious that their purpose is to monopolies these particular classic car designs, they will not be used for other products.

The Court upheld the UKIPO’s position. The 3D trademark applications at hand lack of distinctive character and cannot constitute s source of trade origin.

Source: Automotive News Europe.

Source: IPKat.

Ferrari overcame a refusal for its 488 Pista Spider design in Australia

Ferrari has successfully overcome a refusal by the Australian Patent Office for registration of its vehicle model Ferrari 488 Pista Spider.

The case concerns a design application for this model filed in 2018 in Australia. The design was refused by the Office because it was similar to prior design of Ferrari 488 Spider.

As it is known, you can register a design only if it is new and original.

Ferrari didn’t give up. They hired the well-known expert in the field of luxury cars Anthony Moss to make a professional analyse of both designs. According to him they were sufficiently different taking into account that in the case of sport luxury vehicles consumers pay attention even to smallest details.

In the appeal the Office changed its position. It agreed that when it comes to car design, authors freedom to innovate is somewhat limited because they always have to use wheels, doors, bonnets and mirrors. So in that regard consumers would apportion more weight to areas where the designer has freedom to innovate, which in this particular case was the front and rear section of the car.

In the case at hand, the new model has some differences. For example, an air damn and air scoop running through the front bumper and up through the bonnet of the 488 Pista was different compare with the older design. The air damns and the wrap around diffusers in the rear of the new model were also considered different. 

This case shows clearly that protection of industrial designs can be quite tricky sometimes. The freedom of innovation has to be bear in mind and the field for which the designs will be used. This can be crucial for the success or failure of the design application.

Source: Phillips Ormonde Fitzpatrick – Peter Wassouf, Lexology.