Several issues surrounding the nullity defence in design infringement lawsuits in Germany under the new German Designs Act have arisen.
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.
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Designs Act, design infringment, DPMA, trademark