New Designs Act: validity in infringement litigation
Under the old Aesthetic Models Act (Geschmacksmustergesetz), a defendant in design infringement litigation could question the validity of a registered design simply by disputing it. He had to provide the court with examples of prior art that, ideally, disclosed the design in an identical or almost identical form. The court then had to evaluate whether the design was valid.
If it held that the design was void, it dismissed the infringement action. The judgment had only inter partes effect, ie, the registered design on which the action was based continued to ‘exist’ in the register and could be ‘used’ in other lawsuits against third defendants which did not have knowledge of the fact that another court had already denied its validity.
The new Designs Act provides that the validity of a registered design may be directly disputed in the litigation only if the defendant raises a counter-claim with which he seeks a formal declaration from the court that the design is void (Section 52a). With this change, the German Designs Act replicates a provision of the Community Design Regulation (Article 85), and a defendant will not be heard if he or she simply disputes the validity in the litigation.
The legislative reason is that the register ought to be corrected in all cases where a court has decided that a design is to be treated as void. This legislative motive is also reflected by two other provisions in the new act: first, the infringement court must send a copy of the counter-claim to the German Patent and Trademark Office (DPMA). Second, after the proceedings have ended, the court must send a copy of the full judgment to the DPMA (Section 52b[4]).
Nullity proceedings and their effect
For the first time, there may now be situations in which the design infringement court has to decide whether the infringement lawsuit based on a German registered design must be suspended pending the decision in parallel administrative nullity proceedings. This situation is the subject matter of Section 34b of the new act. This provision corresponds to an identical provision in the German Utility Model Act dealing with conflicting situations between infringement litigation and a parallel cancellation action before the DPMA. It provides that the court may, in principle, exercise reasonable discretion in its decision whether to suspend.
In practice, the courts will probably establish the same standard that has long been used in patent or utility model litigation, according to which the court suspends if there is a high likelihood that the patent or utility model will be nullified or cancelled. It may be that this standard will not be used as strictly as in patent litigation since the registered design remains an IP right that is not examined prior to registration. It may be that if there is a realistic likelihood that the DPMA will nullify, the court will suspend. Section 34b further states that if the court is convinced that the design is void, and there is a parallel administrative nullity proceedings, it must suspend the infringement litigation.
"the court must set a deadline for the defendant to file a request to the DPMA for administrative nullity proceedings; the infringement proceedings are then suspended."
Another statutory reason to suspend the infringement lawsuit is constituted by the new provision of Section 52b(3) of the Designs Act. It says that the owner of the registered design, which is normally the plaintiff in the infringement litigation, may request that the litigation is suspended if the defendant has filed a counter-claim to have the design declared void. In this situation, the court must set a deadline for the defendant to file a request to the DPMA for administrative nullity proceedings; the infringement proceedings are then suspended.
If the defendant then fails to file such a parallel request, the lawsuit continues and the counter-claim is deemed to have been withdrawn. This provision gives the owner of a design a little free space to decide which body (the DPMA or the infringement court) may ultimately decide the issue of validity. This provision reflects the intention of the German legislature to establish a general preference for administrative nullity proceedings.
Jens Künzel, LLM, is a partner at Krieger Mes & Graf v. der Groeben. He can be contacted at: jens.kuenzel@krieger-mes.de
