New designs act in force

It replaced the previous Aesthetic Models Act (Geschmacksmustergesetz) and contains some innovations.

The most striking novelty is that the name of an old IP right has been replaced by a new official denomination, Registered Design. The old name—Aesthetic Model (Geschmacksmuster)—was no longer in line with what has long been common usage in the German legal community. The change of name to Registered Design is most welcome; it has not altered the right itself.

The Community Design is still officially called the Community Aesthetic Model (Gemeinschaftsgeschmacksmuster), even in Sections 62 to 65 of the new Designs Act, although in practice—most obviously if English is used as a language for foreign clients—Community Design remains the preferred term. It would make sense to change the official term in the German language too, in line with the new German term for the national design right.

Introduction of a nullity procedure before the DPMA

Section 34a of the new Designs Act introduces a nullity procedure before the German Patent and Trade Mark Office (DPMA) which correlates to cancellation and opposition procedures in utility model and trademark cases.

Before then, German law provided for a cancellation action against designs to be decided by the courts competent to hear design cases (the district courts), which had specialised design chambers. This cancellation action has now been replaced by new proceedings, with separate divisions at the DPMA competent to hear the new nullity cases.

As the DPMA previously had no experience in evaluating designs—its only task was to register them—the German legal community will watch closely to see whether the handling of the new procedure and of the substantive design law conforms to the high standards that German courts previously set in cancellation actions. It may be that the new nullity divisions will need some time to adjust to their new task.

It is to be expected that the design infringement courts will, if there is a parallel nullity procedure pending before the DPMA, stay the infringement proceedings in line with the current practice regarding the stay in utility model and trademark proceedings. The new statutory provision dealing with the stay of infringement proceedings (Designs Act, Section 34b) is identical with the corresponding provision in the German Utility Model Act.

The court has two alternatives: first, it is obliged to stay if it is convinced that the design is void and there are parallel nullity proceedings before the DPMA. Second, if it is not convinced, it may still stay. In this case, the courts are likely to act in line with the established rules in corresponding utility model and patent cases, ie, they will stay the infringement lawsuit if there is a high chance that the design right in question will be declared void in the parallel nullity proceedings.

"This cancellation action has now been replaced by new proceedings, with separate divisions at the DPMA competent to hear the new nullity cases."

For defendants who wish to attack the design right for infringement of which they have already been sued, the possibility of raising a counter-claim to have the design declared void remains. The validity of a design cannot be challenged simply by contesting it in a lawsuit; a defendant must either raise a counter-claim or file a nullity request with the DPMA.

While the proponents of nullity proceedings before the DPMA argue that it is less expensive, the costs will not, in all likelihood, be considerably lower. The relatively modest administrative fee is lower than normal court fees, but the majority of cases will be filed and led by specialised attorneys and patent attorney firms. Their costs will not be lower just because the proceedings are conducted before the DPMA.

Another argument against nullity proceedings before the DPMA is that this administrative body has so far not been entrusted with the evaluation of design rights in terms of substantive design law (novelty and originality). Due to their extensive experience in design cases, the specialised design infringement courts may do a very good job in evaluating the validity issues in design cases, as they did when validity could be simply contested by defendants without having to raise a counter-claim.

The argument that many different courts were competent to decide questions of validity is not a sufficient reason for establishing wholly new administrative proceedings, as questions of law are decided by different courts in Germany, and it will remain that way as defendants can still raise counter-claims. It remains to be seen whether practical advantages outweigh the reliable and high-quality treatment of design validity issues by the specialised design infringement courts.