A knotty problem: how to establish unregistered design claims

Seeking protection by way of unregistered design rights can be a challenge. Henning Hartwig reports.

In October 2008, the German Federal Supreme Court held in its well-known Bakery Press judgment (in line with the Frankfurt District Court and the Hamburg Appeal Court) that a design enjoys protection as an unregistered Community design only if it was first made available to the public within the territory of the European Union (EU); a disclosure outside the territory of the Community—even if it could have become known to specialised circles operating within the Community—would not meet the requirements under Articles 11, 110a (5) Sentence 2 of the Community Designs Regulation (CDR).

Interestingly, the Supreme Court refused to refer the case to the Court of Justice of the European Union (CJEU) pursuant to Article 267(3) of the Treaty on the Functioning of the EU (TFEU) as the law was acte claire. Although some practitioners thought and even now continue to find that this case law discriminates against non-European entities (or small and medium-sized European entities), the text of the regulation is clear and, at the same time, there is an inexpensive alternative: the registered Community design.

The Bolero Jacket case