Scope of protection of community designs: the Kinderwagen II case

Germany’s Federal Supreme Court currently hands down an unusually high number of decisions dealing with matters of design law, well above the average handed down since the new German Designs Act and the Community Design Regulation (CDR) took effect in 2004 and 2003, respectively. This may be due to the fact that the practice has raised many questions of fact and law that the court is only now answering.

The string of decisions issued by the Federal Supreme Court (such as Untersetzer; Kinderwagen I; and ICE) has clarified many questions in respect of both validity and infringement of designs. However, one of the most tricky and important issues remains the question of how to ascertain the scope of protection of a given design in relation to the prior art, and what rules will guide the practitioner in this field. Both the CDR and the Designs Act (which implemented the EU Designs Directive) contain provisions on the scope of protection.

Article 10 para 2 of the CDR contains the rule that in ascertaining the scope of protection of a design, one shall consider the degree of freedom the designer had when he created the design in question.

Recent German case law established the rule that this freedom should be determined with regard to the “concentration of designs” in a given field. If this concentration is high (ie, if prior art designs are close to one another), the freedom of the designer is low, resulting in a design with a small scope of protection since the prior art is close.

One of the two main issues in the Kinderwagen II [children’s buggy II] case—in which the same parties as in Kinderwagen I quarrelled over modified models, and which concerned the same Community Design—is to clarify the standard test for the practitioner in ascertaining the scope of protection. The case was decided in July 2012 and the reasoning published in January 2013.

“IF THE CONCENTRATION OF DESIGNS IN THIS PARTICULAR FIELD OF PRODUCTS IS HIGH, THE DESIGNER HAS REDUCED FREEDOM TO COME UP WITH NEW ORIGINAL DESIGNS.”

The Federal Supreme Court holds that this test has to be performed in two distinct steps. The first step is to compare the prior art. If the concentration of designs in this particular field of products is high, the designer has reduced freedom to come up with new original designs. This degree of freedom is the first threshold for determining the scope of protection.

The second step of the test may be decisive, which is the concrete comparison with the closest prior art designs in order to ascertain to what degree the designer has in fact used his freedom. So the distance between the prior art and the design must be determined. It may arguably be that this second step is still the decisive test for the scope of protection.

The first step (freedom of the designer), however, arguably also has a meaning in the overall evaluation of the design’s scope. This scope may be higher where the freedom is small and the designer used what little space he had in order to come up with something original.

The second important issue decided in Kinderwagen II concerns the infringement test. Article 10 para 1 of the CDR says that a Community Design covers all designs whose overall (aesthetic) impression is not different from the design. That leaves a lot of space for evaluation and interpretation.

In this case, the Court of Appeal had said that the children’s buggies in question were not different although they differed in some features that the court considered merely ‘technical’, so that the overall impression was not different. The Federal Supreme Court found fault in that reasoning.

It may be that technical features did not contribute much to the aesthetic impression of the Community Design (so that these features could not constitute or contribute to the validity of a design). However, if the attacked model differed in such a technical feature from the Community Design, it may well be that this difference—albeit in a technical feature—could be decisive for the question of infringement.

Jens Künzel, LLM, is a partner at Krieger Mes & Graf v. der Groeben. He can be contacted at: jens.kuenzel@krieger-mes.de