The Federal Court of Justice strengthened design protection for so-called combination products with its judgment of March 24, 2022 (Az.: I ZR 16/21). However, individual components are not eligible for protection.
Combination products are considered protective items that, although consisting of multiple objects, are perceived as a single product according to general market understanding, explains the commercial law firm MTR Rechtsanwälte.
Before the Federal Court of Justice, the case involved a registered design for cutting boards. The plaintiff and owner of the design had deposited three representations in the register. It could only be seen in one representation that the cutting board included a collection tray, while the other two only showed the boards. The owner had not submitted an explanatory description or a goods class list.
When a retailer sold a cutting board with a collection tray online, the plaintiff asserted cease-and-desist and compensation claims due to the infringement of his design. In her counterclaim, the retailer demanded that the design be declared null and that the owner be convicted for an unjustified alert regarding protective rights.
The retailer succeeded before the Higher Regional Court of Munich. The court decided that the design had to be declared null. It was not permissible to form an intersection from the various versions of the cutting board – with and without a collection tray – and reduce the design application to the cutting board without a tray. The design application did not show the appearance of a single product, but of two products, according to the Higher Regional Court of Munich.
In the appeal proceedings, the Federal Court of Justice again strengthened the owner’s protective rights. The design could not be declared null based on the justification of the Higher Regional Court of Munich. The court had not sufficiently considered that the representations submitted to the register did not show mutually incompatible features. Merely one representation showed the cutting board with vegetables and a filled collection tray, while these elements were not part of the other representations, stated the judges in Karlsruhe.
Therefore, it must be determined through interpretation whether the design protection is claimed for a simple cutting board or for a combination product consisting of a cutting board and a collection tray. What could be decisive here is whether the board and tray are perceived as a single combination product according to market understanding. The Higher Regional Court must now decide this again.
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