Design protection given broader scope under new law

A new law implementing the EU Design Directive has come into force, completing the modernization of German design law. The law aims to simplify the protection of designs in Germany - since the directive was passed, separate EU-wide design rights have been introduced, resulting in a complex design protection system made up of both national and EU law.

The most significant change introduced by the new law is that it broadens the scope of design protection. Whereas previously a design was only infringed if the infringer was aware of the design, the new law states that any unauthorized use in relation to the relevant products will amount to infringement.

The law also amends the registration requirements. The previous concept of originality is replaced by a requirement that the design is novel and has individual character. The law states that a design has individual character if the overall impression it creates on an informed user differs from the impression created by other known designs. The practical significance of this change remains to be seen.

The administrative procedures for filing design applications remain largely unchanged by the new law. The grace period for designs is extended from six to 12 months. During this period, the design owner may test the market without invalidating his/her subsequent design application. Applications will only be subjected to substantive examination if they are challenged. However, in future the applicant will be required to specify the product(s) in relation to which the design will be used, and the scope of protection will be confined to the relevant class of goods.

Unlike some European countries, such as the United Kingdom, Germany has previously provided design protection for "spare parts", and it will continue to do so under the new law. This protection of spare parts is controversial - it was not dealt with in the directive, but the European Commission indicated that proposals for harmonization of spare parts regimes would be introduced at a later stage.

For a background discussion of the law, see Bundestag approves new German Design Act.

Anna Booy, Willoughby & Partners Solicitors (Working with Rouse & Co International), London