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


Jens Künzel

The problem when a text protected by a copyright may be used in the form of a ‘citation’ regularly arises in copyright law. It is maybe not so common in the context of design law.

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.

German Registered Design Act