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Design saved by Copyright

April 19, 2018 / Blog, Case Comment

F1

Ferrari v. Asian gear

End of 2004, Ferrari made the Dutch customs seize a shipment of Asian Gear’s radio-controlled scale model cars on the basis of infringement of the famous Italian brand’s designs and copyrights. According to Ferrari, Asian Gear also acted in unfair competition by taking advantage of the reputation of the Maranello-based luxury sports car manufacturer.

As a result, the car toy market would be flooded with cheap poor quality Ferrari scale models.

Asian Gear retorted and applied for a declaration of invalidity at the EUIPO in Alicante to annul the community design regarding the Ferrari F1 model.

Ferrari pleaded the basic design thresholds of novelty and individual character on the Ferrari F1 model only on the basis of the difference in use.

The use as a toy car instead of a real size (race) car. As a reminder, a design shall be protected by a Community design to the extent that it is new and has individual character compared to other designs previously disclosed to the public.

The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design, clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design. Question is if the difference in use is sufficient to meet the necessary novelty or individual character standards.

It seems pretty obvious that the informed user of scale model cars – as a car enthusiast – would be familiar with the designs of the real size Formula One race cars. The judge of the Court of Den Haag did not follow the design defence strategy of Ferrari. Ferrari also invoked copyright protection on the specific colours used on the F1 model and its lay-out.

Asian Gear responded that the lay-out and colour combination on Formula One race cars are merely confined by the logos of the sponsors and this does not make an imprint of the personality of the author. Nevertheless, the degree of freedom of the car designer for developing the overall picture of the Ferrari race car was judged high enough.

The only criterion of originality for assessing copyright protection on the F1 car model was therefore met and in the end, thanks to copyrights, the infringement claim was accepted.

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