German design law: change and continuity
German design law, established in 1876, was modified significantly when the EU’s 1998 Designs Directive was implemented in Germany in 2004. While, for instance, the standard for testing a design’s validity under the original German design law was its “novelty”, compared with a specific piece of prior art, and its “individuality”, considering the entire body of existing designs, the German Design Act of 2004 required a design to be “new” and to have “individual character” when compared with all other prior designs one to one; this latter test including the “degree of freedom of the designer in developing the design”, which requires consideration of all the existing designs in that area side by side.
New procedures
More recently, the German legislature adopted amendments to the Design Act, and these came into force on January 1, 2014. While the standards of eligibility for design protection and for determining whether a design is valid remain unchanged, the new law changes the way the validity of a registered German design may be challenged: Germany opted to align German invalidity proceedings with the European rules in the 2001 Community Design Regulations (CDR), at least in general.
Requests for a declaration of invalidity of a German design registration now have to be filed at the German Patent and Trademark Office (DPMA) rather than by filing a nullity action with a regular German court. However, the possibility for defendants to lodge a counterclaim for a declaration of invalidity before such a court, asking for injunctive relief and damages as well as other secondary claims, such as recall and destruction, will remain available thanks to Section 33(3) of the German Design Act.
As to the relationship between regular court proceedings for injunctive relief and related claims, including a possible counterclaim for a declaration of invalidity, and a request filed with the DPMA for a declaration of invalidity, German design law requires that court proceedings may, or must, be stayed if specific conditions are met, regardless of whether the court action is earlier or later than the invalidity action before the DPMA.
Court proceedings must be suspended “if the court finds the design to be invalid” (Section 34b, Sentence 2, German Design Act). If a request for a declaration of invalidity of a German design registration has been finally rejected by the DPMA, a German infringement court is bound by such a decision only if the parties are the same (Section 34b, Sentence 3, German Design Act). So a later counterclaim in civil court proceedings is inadmissible if a request for a declaration of invalidity of a German design registration, involving identical parties, has been finally rejected by the DPMA (Section 52b[2] German Design Act). Likewise, a later request for invalidation is inadmissible if, in court proceedings involving identical parties, there is a final decision on the validity of the design at issue (Section 34[1], Sentence 3, German Design Act).
The new Design Act does not provide for the situation where, between identical or different parties, a request with the DPMA is filed after a counterclaim has been lodged. While such a situation is not likely to occur, it should be treated in the same way as co-pending actions are generally treated, ie, if between the same parties and concerning the same subject matter, the later action is not admissible, whereas, if between different parties, the later action may be stayed.
Possible repercussions on filing strategies
Given that the substantive requirements for establishing design protection and testing design infringement have been harmonised in the EU, German infringement courts should come to the same conclusion regardless of whether an infringement claim or a counterclaim for a declaration of invalidity is based on a German or a Community design registration. Assessing the validity of an industrial design using the test of novelty and individual character follows the same rules in Germany and Europe.
In particular, all the relevant body of existing design work should be considered in an absolute, ie, global, sense. In other words, each and every single piece of prior art published anywhere in the world must be considered as relevant, “except for where such disclosure could not reasonably have become known in the normal course of business to the circles specialising in the sector concerned, operating within the Community” (Section 5 German Design Act and Article 7 CDR).
"when it comes to main proceedings based on the asserted infringement of a German design right, it is largely in the defendant’s hands whether to delay proceedings."
It thus appears that substantive design law is not an argument for filing nationally; even less so considering the low costs of filing a Community design application which, roughly, equal the costs of filing nationally in just two or three member states.
Strategic and tactical considerations remain. Is it more likely in German rather than in Community infringement proceedings that the proceedings will be stayed when a later, independent, request for a declaration of invalidity is lodged? Also, what are the chances that prior, or later, cancellation proceedings will be stayed in order to let infringement actions continue? Is bifurcation—splitting the proceedings into two—a good idea and, if so, would it benefit the right holder or the defendant?
Bifurcation under German design law
In a standard case, a right holder will start either by issuing a demand letter or by initiating court proceedings directly. Summary proceedings do not allow the court to stay the matter (rather, the defendant is limited to arguing the invalidity of the asserted design). Proceedings on the merits, however, include in principle the option that the proceedings are stayed, at the request of one of the parties or both, in the light of parallel invalidity proceedings.
While under the CDR a court will, as a rule, stay infringement proceedings where “… an application for a declaration of invalidity has already been filed at the Office” pursuant to Article 91(1) CDR, German design law provides, as already mentioned above, that court proceedings may, or must, be stayed if specific conditions are met, regardless of whether the court action is earlier or later than the invalidity action before the DPMA.
Such rules seem to be to the advantage of a possible defendant. He or she has the choice of waiting until he/she gets sued and then deciding whether a non-infringement defence is strong enough to prevail or whether, alternatively, invalidity should be argued in separate proceedings before the DPMA to delay infringement proceedings. As the new German Design Act entered into force only on January 1, 2014, there is no established practice. However, the relevant provisions do not seem to allow for any other conclusion: when it comes to main proceedings based on the asserted infringement of a German design right, it is largely in the defendant’s hands whether to delay proceedings.
Under German design law, and as a minimum standard, infringement proceedings can and must be suspended only “if the Court finds the design to be invalid” (Section 34b, Sentence 2, German Design Act). However, it is unclear, for the time being and in the absence of any established practice, whether German trial judges are required to issue a full opinion or whether a summary order will suffice. It is also unclear, at least in the situation where rather low standards are assumed, whether German courts will feel inclined to stay infringement proceedings rather than continue with them on their merits in order to reduce their work load.
Change and continuity
Overall, and as a conclusion, the new German Design Act does not seem to provide any new arguments or incentives, from a potential design right holder’s point of view, on whether to file nationally, either exclusively or in support of a parallel Community design application. Nonetheless, for the sake of completeness, and given that substantive German design law remains unchanged, there is one good example of where an original manufacturer should file nationally as well as internationally: contrary to Community design law, German design law gives design protection for spare parts, including the right to prevent the use of such designs for the purpose of repair. This allows, in particular, car manufacturers to successfully enforce design rights against the suppliers of parts similar to theirs.
Dr Henning Hartwig is a partner at Bardehle Pagenberg Partnerschaft mbB Patentanwälte Rechtsanwälte in Munich. He can be contacted at: hartwig@bardehle.de
