Supreme Court considers component part of complex product in design case

The German Federal Supreme Court has issued its decision in a case involving a design applied to a product which constitutes a component part of a complex product (Case I ZR 14/12).

The claimant was the owner of a German design registration (with a filing date of February 3 2004 and a registration date of March 17 2004) representing the outer appearance of a ridge roll to be incorporated in a roof. The claimant sued the defendant for design infringement, but the Karlsruhe Appeal Court dismissed the action, finding that, under Section 4 of the German Designs Act of March 12 2004:

1. the asserted design was applied to a component part (ie, the ridge roll) to be incorporated into a complex product (ie, the roof); and
2. the features of the component part remaining visible during normal use of the complex product did not fulfil the requirements of novelty and individual character (Section 4 of the German Designs Act corresponds to Article 3(3) of the Community Design Directive (98/71) and Article 4(2) of the Council Regulation on Community Designs (6/2002)).

The Federal Supreme Court confirmed the lower instance decision, holding that Section 4 of the German Designs Act was applicable to the case at hand (and to all other national designs filed and registered after October 27 2001), while the former German design law (which lacked such a provision) was not. According to the court, given that the design at issue met these requirements, the claimant was not allowed to claim any legitimate expectation as to the continued application of the previous law, even less so given that the German Designs Act followed the Community Design Directive, which should have been implemented by October 28 2001.

Pursuant to Section 1(3) of the German Designs Act, which corresponds to Article 1(c) of the Community Designs Directive, a ‘complex product’ means a product composed of multiple components which can be replaced, permitting disassembly and re-assembly of the product. Therefore, according to the Supreme Court, it is sufficient that:

1. a product consisting of multiple component parts can be disassembled and reassembled (which is possible in the case of a roof, even if considerable efforts and external intervention would be necessary); and
2. the multiple component parts can be replaced.

On the other hand, Section 1(3) of the German Designs Act does not require that the original component part be re-used in case of reassembling. Rather, pursuant to the text of the law, the multiple components must only be susceptible of being replaced (but not re-used). As a consequence, products such as a roof, which can also consist of component parts that are not produced individually and are replaceable (eg, a ridge roll), were deemed to be ‘complex products’ within the meaning of Section 1(3) of the German Designs Act.

Henning Hartwig, Bardehle Pagenberg, Munich