The Federal Court of Justice strengthened design protection in so-called combination products with its judgment of March 24, 2022 (Case No.: I ZR 16/21). However, individual components are not worthy of protection.
Combination products are considered protective items that, while consisting of several objects, are viewed as a single product according to general traffic perception, explains the commercial law firm MTR Rechtsanwälte.
The case before the Federal Court of Justice involved a registered design for cutting boards. The plaintiff and owner of the design submitted three illustrations in the register for its reproduction. The fact that a collecting tray is part of the cutting board is only visible in one illustration, while the other two only show the boards. The owner did not submit an explanatory description or a list of product classes.
When a retailer sold a cutting board with a collecting tray online, the plaintiff filed claims for injunctive relief and damages for the infringement of his design. In her counterclaim, the retailer demanded that the design be declared null and void and that the owner be condemned for an unjustified warning of protective rights.
The retailer succeeded before the Munich Higher Regional Court. The court ruled that the design should be declared void. It is not permissible to form an intersection from the various embodiments of the cutting board – with and without a collecting tray – and to reduce the design application to the cutting board without a tray. The design application does not show the appearance of a product, but that of two products, according to the Munich Higher Regional Court.
In the appeal proceedings, the Federal Court of Justice once again strengthened the protection rights of the owner. The design cannot be declared null and void for the reasons given by the Munich Higher Regional Court. The court did not sufficiently consider that the illustrations submitted in the register do not show any incompatible features. Solely one illustration shows the cutting board with vegetables and a filled collecting tray, while these elements are not part of the other illustrations, according to the Karlsruhe judges.
Therefore, it must be determined through interpretation whether design protection is claimed for a simple cutting board or for a combination product consisting of a cutting board and a collecting tray. The decisive factor could be whether the board and tray are perceived as a single combination product according to general traffic perception. The Munich Higher Regional Court must now decide this again.
In experienced attorneys in IP law can advise on the protection of intellectual property.
