1 December 2011CopyrightJens Künzel

When is the use of a design admissible as a 'citation'?: the ICE case

Germany’s Federal Supreme Court had to decide such a case which involved three different registered designs of the ICE, the well known high-speed train operated and owned by Germany’s state-owned federal railway (Deutsche Bahn).

Deutsche Bahn had criticised an advertisement by a firm of engineers concerned with developing railway techniques. This firm had previously developed a device connected with the operation of the ICE trains. In the advertisement, the firm sought to present its services with reference also to the ICE by including a picture which showed the ICE 3 model.

Deutsche Bahn informed the firm of engineers of its design rights concerning the ICE train models and asked them to sign a corresponding licence agreement which involved the payment of a licence fee. The firm of engineers then filed a negative declaratory action asking the court for a binding statement that the use of the picture in the advertisement was legal. Both the court of first instance and the Court of Appeal of the State of Berlin had dismissed the action because it held the advertisement constituted a design infringement.

Apart from procedural questions concerned with whether the plaintiff firm of engineers had an interest to seek such a statement from a court, the Federal Patent Court had to concern itself with the plaintiff’s legal argument that the use of the ICE picture in the advertisement was legal because it was covered by an exception that German design law (which implements the European Directive for registered designs) provides for the protection of designs, which is the right of ‘citation’ in Sec. 40 No. 3 of the German Registered Designs Act.

According to this provision, the “rendition” of a design “for the purpose of citation” may not be regarded as a design infringement if such rendition is in line with common practice of a fair business, it does not negatively impact on normal exploitation of the design right and the source of the design is indicated.

“THE COURT HELD THAT THERE WAS NO SUCH INNER CONNECTION BETWEEN THE ICE 3 PICTURE AND THE FIRM OF ENGINEERS’ OWN THOUGHTS. THE PICTURE WAS USED ‘PURELY FOR MARKETING REASONS’ AND NOT FOR A DISCUSSION OF THEIR OWN THOUGHTS.”

The Federal Supreme Court first states that the requirements for a legal citation are the same in design law as they are in copyright law. A ‘citation’ therefore requires that there is an inner connection between the cited object and the original thoughts of the person making the perceived citation. A further requirement is that the used design object must be used as a quotation or means of discussion for this person’s thoughts. In the case at hand, the court held that there was no such inner connection between the ICE 3 picture and the firm of engineers’ own thoughts. The picture was used “purely for marketing reasons” and not for a discussion of their own thoughts.

The court held that the firm of engineers could not invoke that it had developed a technical device used by Deutsche Bahn for the ICE because the advertisement text did not refer to this device so that the picture could not seem to have been used for the purpose of “discussion” of this technical device.

There was, in the opinion of the court, no inner connection between the advertised services of the firm and the pictured ICE 3 model. So the plaintiff could not successfully invoke the right of citation in Sec. 40 No. 3 of the German Registered Designs Act in order to justify the advertisement.

The decision sheds more light on the scope of this exception to design protection. It is probably the first decision concerning this exception after the German design law has been remodelled for the purpose of implementing the European Design Directive. It therefore is an important statement from Germany’s highest court with regard to a question that is decisive for many business sectors involving technical and other services and for their possibilities to use their previous work as a reference.

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

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