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Design Law in Germany and the European Union

by Sebastian Meis LL.M. (Canterbury)*

First published: January 4, 2006

I. Introduction

Following recent changes in Germany's legislation on industrial design law, this note examines the protection for industrial designs provided under German law and in the European Community. Its emphasis is on the latest development of the legislation on copyright in industrial designs in Germany. It will also illustrate the requirements that industrial designs need to meet for protection under German and European Community law. I begin with a close look at the idea and the effects of protection of industrial designs in order to provide a basis for examining the legal aspects concerning industrial designs.

After a brief overview of the concepts and options for protecting industrial designs, the focus of this article will be on German design law and the European Community design.

II. The Concept of, and Need for, Protection of Industrial Designs

"An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color". WIPO, About Intellectual Property, Industrial Designs, Jan. 4, 2005.

In comparison to other forms of intellectual property rights, industrial designs may appear to assume an insignificant role while patent, trademark and copyright attract more attention from the business community. Industrial designs have increasingly been used, however, as essential elements of products. Hence, business has come to recognize the importance and monetary value of industrial designs as core business aspects. Therefore, general concepts of the protection of industrial designs are worth exploring.

The idea and need to protect industrial designs is attributed to their attractive and appealing effect on consumers. Consumers often associate a specific design with a manufacturer and its branding, sometimes with an entire product line. By securing a high level of brand recognition, an industrial design contributes substantially to the commercial value of a product. Hence, a memorable and appealing design constitutes an influential marketing measure leading to increased commercialization and the economic success of a product.

Protecting industrial designs also fosters fair competition and honest trade practices to the benefit of industry and consumer interests. To protect the market value of industrial designs, competitors engaging in unfair business practices, such as unauthorized copying, should be refrained from availing themselves of the appealing effect industrial designs have on consumers and of the proprietor's investment. Further, design protection provides for a fair return on such investment and designers' creativity. This will lead, ultimately, to an expansion of commercial activities and further investment.

These factors highlight the important role of effective protection of industrial designs for the industry and its economic development.

II. Protection of Industrial Designs

Under most national laws, industrial designs must appeal to the eye to qualify for protection. This means that industrial designs are primarily of an aesthetic nature, such as the design of a coffeepot, pattern of fabric, designs of cars, computers or furniture. Therefore, designs that are purely utilitarian or technical features of the article which only incorporate a design are not protected.

By registering an industrial design and obtaining protection under the applicable law, the owner of the design right acquires the exclusive right to its use and to enforce remedies against any infringer who produces an identical or similar design.

In most legal regimes, protection of industrial designs requires them to be registered. As a basic rule, in order to be registrable, a design has to be "new" or "original". The definitions of these terms vary among legal systems; so does the procedure for registration. In general, "new" implies that no identical or very similar design is known to exist or be accessible to the public. Upon registration with the appropriate authority, a certificate of registration certifies the owner as deserving protection for a limited period of time.

III. Options for Protection of Industrial Designs

In contrast to patents or utility models, only the external form of a work, that is its design, may be protected under design law. As mentioned above, an industrial design may be either a two- or three-dimensional pattern. Depending on the applicable legislation and the type of design, industrial designs may also be eligible for protection as a work of art under copyright law. Whereas some legal regimes afford protection both under design law and copyright law, other legal regimes treat these laws as mutually exclusive.

In certain environments, unfair competition may provide suitable protection to industrial designs. The requirements for this type of protection, the rights as well as remedies asserted may differ greatly, however, and will not be addressed in this article. There is also significant overlap with trademarks as the recent German decision to protect the shape of the Porsche Boxter motor car demonstrates.

IV. Protection of Copyright in Industrial Designs under German Design Law

Germany's law of industrial designs has its origin in the German Act on Copyright in Industrial Designs, Gesetz betreffend das Urheberrecht an Mustern und Modellen (GeschmMG), of 1876. Before the latest amendments became effective on June 1, 2004 (Federal Law Gazette, BGBl. Teil I/2004, p. 390), it was the oldest statute in force.

The new statute, GeschmMG 2004, intends to accommodate prevailing conditions with regard to industrial designs and to keep pace with changes in an increasingly commercialized business world. The new statute complies with Directive 98/71/EC of the European Parliament and of the Council of October 13, 1998. The directive is intended to harmonize the main rules governing industrial designs registered in the Member States.

1. Recent Changes to the German Act on Copyright in Industrial Designs

As a basic concept, the old Act, fashioned after German copyright law, required originality as the main criterion for protection and provided an anti-copying prohibition as opposed to an exclusive right. The new Act takes a different approach by granting the holder an exclusive intellectual property right that is accorded upon registration, similar to the German Patent law, Patentgesetz, and the Utility Models Act, Gebrauchsmustergesetz.

Three key points of the new legislation are as follows:

  • Protection of industrial designs under German law may be obtained only by registration at the German Patent and Trademark Office in Munich (GPTO);
  • No protection may be afforded to unregistered designs under German law; and
  • As from March 1, 2003, designers may apply also for the Registered Community Design at the European Union's office for registering designs and trademarks (Office for the Harmonization of the Internal Market, OHIM), located in Alicante, Spain.
  • 2. Requirements under the Amended German Act on Copyright in Industrial Designs

    Under §1, No. 1 GeschmMG (2004) a design is the two-dimensional or three-dimensional appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or the materials of the product itself or its ornamentation.

    The former Act granted protection to a design if it fulfilled the requirements of novelty, Neuheit, and distinctiveness, Eigentümlichkeit. A design shall be considered new, pursuant to §2(2) GeschmMG (2004), if no identical design has been disclosed before the date of filing the application. The element of distinctiveness was met where a work constituted the result of independent human intellect and creativity, even if a similar product had been known to the public before. The new legislation broadened that scope by lowering this threshold. Instead of demanding aesthetics of a work, the 2004 Act calls for an individual character, Eigenart, of the design. According to §2(3) GeschmMG (2004), a design has an individual character if the overall perception of an informed user with regard to the work is distinguished from the overall perception generated by another work that was already published or available on the market. In other words, the public must readily perceive that the new design is different from prior designs.

    As a result, the new law protects also physical forms, such as designs of technical devices, consumer goods or packages. Thus, design protection in general gains because more designs fall within the scope of the law, and creativity and innovation will be fostered.

    3. Protection of Copyright in Industrial Designs

    German law affords protection to the creator upon registration of the industrial design. Hence, in order to benefit from protection, one must apply for registration of the industrial design at the German Patent and Trademark Office (GPTO) within six months after creating the design. Only registration guarantees the creator the exclusive right of bringing the industrial design on the market, granting licences and transferring the intellectual property right. As to the extent of protection, there is a substantial difference between the new and the old Act: the 2004 Act entitles the owner to use the design exclusively and to enjoin third parties from using it without permission pursuant to §38(1) GeschmMG (2004). The owner receives such rights irrespective of whether the infringing party acts in bad faith (mala fides) regarding the protected design and whether the protected design was copied or not. While the former law entitled the owner only to prohibit the imitation of the design, now a ban of the production and publication of a protected design may follow even if the infringing party is in good faith (bona fide). This posture strengthens the exclusive right greatly.

    Further, a designer may obtain protection for industrial design under the new Act more easily than under copyright law, because the latter requires a degree of creativity. A designer should apply, therefore, for registration of the industrial design. That is particularly true as the law permits protection by copyright and design law to co-exist.

    In the event of an infringement of the design, the proprietor may claim damages or bring an action for injunctive relief under §42 GeschmMG (2004).

    Whereas the old Act granted protection upon filing of the application for registration, §27(1) GeschmMG (2004) conveys protection only upon the issuance of the certificate of acceptance by the GPTO. Initially, protection is limited to five years. Through renewals for five years each, the owner may acquire protected status for up to 25 years as long as the renewal fee under §27(2) GeschmMG (2004) is paid.

    4. Procedure

    In contrast to a copyrighted work, a design has to undergo an application procedure at the GPTO. Generally, a designer should apply as soon as possible in order to prevent other competitors to anticipate. The grace period of §6 GeschmMG (2004) enables the designer to market the product for a full year before applying for protection, without endangering the claims of novelty.

    The GPTO as a federally designated agency is authorized to maintain a Designs Register. Although the GPTO established minimum requirements for designs, such as duly completed forms and documents, it does not determine whether a design satisfies the legal requirements that qualify the design to be effective under the design statute or for enforcement against infringing third parties. That examination is left to the court during litigation, for instance if the holder claims damages from infringement. The GPTO assesses whether the subject-matter of the application is a design within the meaning of §1, No. 1 GeschmMG (2004), and whether the design is not contrary to public policy or to accepted principles of morality, or whether the design constitutes an improper use of any of the items, emblems etc. listed in Article 6ter of the Paris Convention for the Protection of Industrial Property.

    The application process is outside the scope of this note. Therefore, the following pointers may suffice. Among other things, the application will include:

  • An application form, provided by the GPTO, signed by the applicant;
  • Identification of the applicant;
  • A sketch, description or visual model of the design; and
  • A statement on the class of product incorporating the design.
  • The details of the application depend on the complexity and kind of the design. Therefore, engaging advisers experienced in industrial property protection and authorized to provide legal services, such as an attorney-at-law or patent attorney, is advisable. Counsel will settle all the details for a successful and time-efficient application and estimate the required expenses.

    Designers may now combine applications for up to 100 designs for the same goods, Sammelanmeldung, under §12 GeschmMG (2004). The designer may apply, for instance, for 100 different fabric designs in just one collective act of application.

    Every application receives a primary review by the GPTO. As stated earlier, the GPTO does not determine if a design fulfills the substantive requirements, such as the criteria of novelty and distinctiveness. In fact, this first test is intended to examine only whether the application lacks any necessary documents or forms.

    In return for a fee, the GPTO will register the industrial design and publish an illustration of it in the Designs Gazette, Geschmacksmusterblatt.

    V. The Community Design

    The European Community Design Regulation offers a Community Design Right (CDR). The CDR includes a two-tier system of rights: the Unregistered Community Design and the Registered Community Design. The latter requires an application at the Office for the Harmonization of the Internal Market, OHIM, and is comparable to the German industrial design. With an unregistered CDR, the proprietor will be entitled to quasi-copyright protection automatically upon the first marketing of the design.

    1. The Registered Community Design

    The registered community design was introduced April 1, 2001. It is intended to improve harmonization of design law among the EU Member States by reducing legal obstacles to the circulation of design goods within the Internal Market. Before the introduction of the CDR, designs had to be registered separately in every individual Member State where protection was sought. This constituted a major hindrance to the free movement of those products which incorporated designs, since they were subject to national legislation and held in different countries by different entities.

    By a single application at the Office for the Harmonization of the Internal Market, OHIM, in Alicante, Spain, designs registered with the OHIM enjoy protection in all EU Member States. Their owners have the exclusive right to use the design, to prevent any third party from using it anywhere within the EU and to bar imports into the EU. This provides for a cost efficient protection throughout the EU. Registered community designs are protected against both deliberate copying and the independent development of a similar design. Protection may last for up to 25 years when registration is renewed every five years. The requirements for a design to be registered are identical to the ones under German law, which are novelty and individual characte.

    In respect of potential competitors, a designer should apply for the CDR as early as possible. However, a grace period allows the designer to market the product a full year before applying for protection without compromising the claims of novelty. During this period, the owner of the design may claim the unregistered community design which will be illustrated now.

    2. The Unregistered Community Design

    The unregistered community design must meet the same criteria as registered ones in order to obtain protection. The protection is applicable from the date of disclosure to the public within the Internal Market. That disclosure may occur through designs going on sale or through prior marketing or publicity.

    Unregistered community designs are protected for up to three years at EU level. The main difference between the two community designs refers to the level of protection. While a registered community design is protected against both deliberate copying and the independent development of a similar design, an unregistered community design is limited to protection against deliberate copying.

    Contrary to the registered community design, the unregistered community design -- as the name obviously implies -- does not require registration. However, this simplification involves significant implications as to the enforcement of an unregistered design: Due to the lack of registration, which automatically grants protection to the designer, it is for the designer of an unregistered community design to prove the requirement for its protection, which is the accessibility of the design to the public.

    VI. International Aspects

    Generally, industrial design protection is limited to the country in which protection is granted. The Hague Agreement Concerning the International Deposit of Industrial Designs,** a treaty administered by the World Intellectual Property Organization (WIPO) offers a procedure for an international registration. An applicant may file a single international deposit either with WIPO or the national office of a country which is party to the treaty. The design will then be protected in as many member countries of the treaty as the applicant wishes.

    VII. Protection of Spare Parts (Ersatzteilproblematik)

    As a result of recent efforts toward harmonization among the EU Members, Directive 98/71/EC set certain limitations to the protection under the GeschmMG (2004). Thus, spare parts for an end-product, such as a car, are eligible for protection only if they are visible in their intended use. Despite this restriction, spare parts may yet find protection provided they fulfill the requirements for designs in general.

    In contrast, designs dictated by function of the product--such as certain parts of a shaver which must have a certain shape in order to work--and "must-fit" parts of complex products, for example electrical or other interconnections, with the exception of connections in modular systems such as Lego, are not eligible for protection under the CDR or German design law.

    In line with Directive 98/71/EC, component parts which are not visible and incorporated into complex products will not be protected as long as their use is intended to repair these products and to restore their original appearance. It remains to be seen whether the proposal of the European Commission to amend the spare parts provisions of Directive 98/71/EC will be implemented in a new Directive. The proposal would amend the legal protection of designs under European Community law by removing the Member States' option to maintain design protection for such items. This would allow independent part manufacturers--not linked to the producers of finished cars--to compete throughout the EU market for visible replacement parts, potentionally worth some 10 billion euros annually.

    V. Conclusion

    The recent amendments of German design law evidence not only its conformance with the provisions of Directive 98/71/EC, but also the fact that holders of design rights benefit from a wider scope of the law, in order to protect their rights against un-authorized use of infringers.

    * Sebastian Meis obtained his law degree from the Westphalian Wilhelms-University, Münster, Germany. He also holds an LL.M. degree from the University of Canterbury, Christchurch, New Zealand. During his LL.M. studies, he focused on intellectual property in common law and civil law regimes, in particular trademarks and copyright. Currently he is an intern with Berliner, Corcoran & Rowe, LLP in Washington, D.C. Sebastian Meis anticipates his German bar admission in March, 2006. The author thanks Clemens Kochinke for his valuable suggestions in writing this note.

    ** The Hague Agreement is constituted by three different acts, namely the Geneva (1999) Act, which was adopted on July 2, 1999, and entered into force on December 23, 2003, the Hague (1960) Act, which was adopted on November 28, 1960, and entered into force on August 1, 1984, and the London (1934) Act, which was adopted on June 2, 1934, and entered into force in June 1939. While Germany is a party to the London Act and the Hague Act it has not ratified the Geneva Act yet. The United States of America are not a party of any of the acts of the Hague Agreement.

    Cite as: Meis, Sebastian, Design Law in Germany and the European Union, 15 German American Law Journal, (January 4, 2006).

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