Amendment to design law - old wine in new skins?


German design law was established as early as 1876, but major changes were implemented in 2004 in accordance with Directive 98/71/EC on the legal protection of designs. What remained, however, was the German term for ‘design’ (‘Geschmacksmuster’), which can also be found in the German version of the directive and of the Council Regulation on Community Designs (6/2002).

The German legislature then considered that ‘Geschmacksmuster’ was out-of-date and adopted an amendment to the existing legislation, which will now be named Designgesetz (Designs Act). The new act will enter into force on January 1 2014, introducing the term ‘design’, instead of ‘Geschmacksmuster’, throughout the act. It will be interesting to see whether the European legislature will follow; Switzerland has already been using the term ‘design’ for many years, while Austria has opted for ‘Muster’.

The new Design Act will also change the way in which the validity of a registered German design may be challenged. The legislature opted to bring German invalidity proceedings into line with the rules set forth in Regulation 6/2002. As a consequence, requests for a declaration of invalidity of a German design will have to be filed before the German Patent and Trademark Office (PTO), rather than filing a nullity action with a regular German court. However, the possibility for defendants of lodging a counterclaim for a declaration of invalidity in proceedings on the merits before a regular court (ie, injunctive relief and/or secondary claims, such as information and damages) will remain available (Section 33(3) of the Designs Act).

As to the relation between regular court proceedings for injunctive relief and related secondary claims (including a possible counterclaim for a declaration of invalidity) and a request filed with the PTO for a declaration of invalidity, German design law provides that court proceedings must be stayed if specific conditions are met, regardless of whether the court action predates or postdates the invalidity action before the PTO. Accordingly, court proceedings must be suspended “if the court finds the design to be invalid” (Section 34(b), Sentence 2 of the act). If a request for a declaration of invalidity of a German design registration has been rejected by the PTO in a final decision, the court is bound by such a decision only if the parties are the same (Section 34(b), Sentence 3 of the act). Thus, a later counterclaim in civil court proceedings is inadmissible if a request for a declaration of invalidity of a German design registration, in proceedings involving identical parties, has been rejected by the PTO in a final decision (Section 52(b)(2) of the act). Likewise, a later request for invalidation is inadmissible if, in court proceedings involving identical parties, a final decision on the validity of the design at issue has been issued (Section 34(1), Sentence 3 of the act).

Interestingly, the new Designs Act does not envisage a situation where, in proceedings involving identical or different parties, a request with the PTO is filed after a counterclaim was lodged. While such a situation is unlikely to occur, it should be treated in the same manner as co-pending actions - that is, if the later action involves the same parties and the same subject matter, it will not be admissible; however, if the later action involves different parties, it may be stayed.

Overall, the legislature’s explicit goal is to concentrate “design law know-how” at the PTO (as far as validity issues are concerned) and, simultaneously, to offer a less expensive solution for parties seeking to challenge the validity of a design (the invalidity fee is €300) - the overarching idea being to facilitate access to such actions for small and medium-sized entities. It remains to be seen whether this idea will be widely accepted.

Henning Hartwig, Bardehle Pagenberg, Munich

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