Federal Court of Justice: all representations of a design must show the same embodiment of the product

  • The Federal Court of Justice has held that all representations of a (German) design must show the same embodiment of the product
  • The decisions reverse the so-called ‘intersection theory’, which contradicted the principles of EU design law
  • The decisions may increase the rejection and/or invalidation rate for designs


The German Federal Court of Justice has recently reversed longstanding German case law, finally bringing it into line with the principles of EU design law. In two decisions, the Federal Court of Justice confirmed that all representations of a (German) design must show the same embodiment of the product, thus overruling the decisions of the lower instances (German Federal Court of Justice, decisions dated 20 December 2018, Docket No I ZB 25/18 Sporthelm (sports helmet) and No I ZB 26/18 Sportbrille (sports glasses)).


The subject matter of the decisions were two separate designs belonging to the same owner - one concerning a sports helmet design, the other a sports glasses design. However, both designs had been filed with representations that clearly did not coincide in all details of the respective products, in particular regarding the colour schemes. The owner had in fact filed a design for different sports helmets and different skiing glasses, respectively, as a single design in each case.

In the underlying invalidity proceedings, the applicant had applied for a declaration of invalidity of both designs, arguing that they could not be protected because they did not disclose a uniform subject matter. The German Patent and Trademark Office rejected both applications. The applicant then appealed to the Federal Patent Court, without success.

By way of appeals, the applicant pursued its applications for a declaration of invalidity of both designs and was successful in both cases, as the Federal Court of Justice annulled both decisions. However, as the Federal Court of Justice could not decide on the merits, it remitted the cases to the Federal Patent Court. In view of the very clear reasoning of the Federal Court of Justice in both decisions, it is likely that the Federal Patent Court will declare both designs to be invalid.  

According to Section 1(1) of the German Design Act, the subject matter of a design can, as long as it does not have any abstractions, only consist of the appearance of “one” product (and not of several products); otherwise, the subject matter of the design cannot be determined clearly and unambiguously. If this requirement is not met, the design is invalid pursuant to Section 33(1)(1) of the Design Act. If a single design application contains several representations of a design and it is questionable whether the design application represents the appearance of only “one” embodiment of a product, the protected subject matter must be determined by way of interpretation of the application. However, in order to protect the legal certainty of third parties, the Federal Court of Justice has now set clearer boundaries for a validity-friendly interpretation: the representations must clearly reveal what the applicant seeks to protect. Should an unequivocal interpretation not be possible, the design will be deemed invalid.

Notably, the Federal Court of Justice (again) explicitly stated that, when interpreting a design application, not only the representations, but also the other circumstances of the case, should be taken into account, in particular:

  • the (optional) description of the representations;
  • the (obligatory) indication of the product; and
  • the (optional) list of the class(es) of goods the product is assigned to.


It is hoped that these principles of interpretation will be applied by the offices and courts more consistently than in the past. In this respect, it remains to be seen whether the further requirement established by the Court of Justice of the European Union - according to which the representation of a design must clearly identify not only what is the subject matter of protection, but also what is not the subject matter of protection (see Mast-Jägermeister (Case C-217/17 P)) - will be applied consistently.

The discarding of the so-called ‘intersection theory’ (‘Schnittmengentheorie’) (see Federal Court of Justice judgment of 15 February 2001, I ZR 333/98, Sitz-Liegemöbel (loungers)) was overdue as it clearly contradicted the principles of EU design law. In cases where the representations of a single design show different embodiments of a product with different design features, the subject matter of the design can no longer be determined by creating an ‘intersection’ of the features contained in all the representations. Instead, the design must be declared invalid.

The two decisions of the Federal Court of Justice illustrate the pitfalls of granting protection without examination, and the necessity to act strategically and methodically when filing a design application. While, in the past five years, an average of approximately 10% of German design applications (and, on average, approximately 5% of Community designs) have not been registered, the two decisions at issue may increase the rejection and/or invalidation rate. However, although registered designs are not the subject of comprehensive examination, at least the European Union Intellectual Property Office evaluates, among other things, whether or not the representations are consistent. If the discrepancies between the representations are already noticeable during the application procedure, the office will invite the applicant to either delete certain representations or divide the design into two (or more) separate designs (see Mast-Jägermeister). The applicant may also consider refiling a design within the 12-month grace period of novelty.

For the sake of completeness, it should be noted that, based on the wording of Section 1(1) of the Design Act (“one” design), it cannot be concluded that it is inadmissible to use disclaimers, but only that the representations cannot be contradictory insofar as they show different variations of one and the same feature (eg, an ornament or a pattern). Moreover, it is still admissible to protect “several” embodiments of a product under a single design by making abstraction of the colour, for example.

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