Concept and Significance of Design Admission
Die Design Admission is a legal term from the field of industrial property protection and refers to the explicit or implied acknowledgment of a design right by a person in the context of a legal dispute. The focus is generally on the admission or concession that a particular design is eligible for protection under national or European design law, or that a design right exists. Design admission plays a central role especially in disputes over design infringements and has far-reaching procedural as well as substantive legal consequences.
Legal Nature and Function of Design Admission
Substantive Legal Classification
Design admission is a subtype of general admission under industrial property protection law and can occur either orally or in writing. By making an admission, the party either acknowledges the existence of a registered or unregistered design, or accepts – usually in the context of procedural conduct – the protectability of the asserted design. This conduct can affect the further course of the legal dispute, particularly the allocation of the burden of presentation and burden of proof.
Constituent Elements of Admission
Design admission requires that a party expressly or by implied conduct acknowledges the protectability or scope of protection of a specific design. Typical situations of admission arise, for example, in the response to a warning letter, in the context of legal proceedings, or in a cease-and-desist declaration.
If a party admits the design, this is generally interpreted as a waiver of raising certain objections or defenses against the design as such. In particular, after admission, the party cannot readily argue a lack of protectability, novelty, or individuality (§§ 2, 3 DesignG or Art. 4, 5 Community Design Regulation).
Procedural Significance of the Design Admission
Effects on Burden of Proof
In design infringement proceedings, the claimant is generally required to set out and prove all elements of the claim. This specifically includes the protectability of the design. However, if the defendant admits the protectability or existence of a design, the necessity for the claimant to explicitly prove the protectability ceases to apply. The admission thereby constitutes a procedural confession within the meaning of Section 288 ZPO, which is binding for the court.
Withdrawal and Binding Effect
An admission of design admission, once made, can generally not be revoked unilaterally. The party is bound in the further course of the proceedings as well as in subsequent proceedings by the declaration made in connection with the design admission, unless circumstances are present that justify a withdrawal (e.g., if the admission was based on an obvious error, Section 290 ZPO).
Distinction from Similar Legal Institutions
Acknowledgment and Admission
The design admission must be distinguished from procedural or substantive partial acknowledgment. While acknowledgment is generally aimed at specific claims or rights, admission refers to the acknowledgment of an abstract prerequisite—here, the existence of a design right. Furthermore, design admission differs from the so-called “objection of non-protectability,” since the latter expressly contests the existence or scope of the right.
Design Admission and Warning Letters
In warning letter proceedings—prior to court proceedings—an admission plays a particular role. If the warned party issues a cease-and-desist declaration in which the protectability of the design is acknowledged or not contested, this can be regarded as a design admission. As a result, the warned party would be bound to the admission in any subsequent court proceedings and could no longer contest the protectability or existence of the design.
Design Admission in the European Context
Community Design and Design Admission
The European Community Design Regulation (CDR, Regulation (EC) No. 6/2002) does not explicitly recognize admission as a legal construct. However, the principles of admission are also applicable to proceedings before the EUIPO or in the context of infringement actions concerning Community designs. An admission by the parties binds them under national civil procedure law, typically under the procedural law determined by the member states.
Practical Tips for Dealing with Design Admission
- Review before Making an Admission: Any acknowledgment or non-contestation of protectability should be carefully reviewed with regard to its legally binding effect.
- Drafting of Warning Letter and Statement of Defense: Admissions should be explicitly avoided or expressly limited if a later challenge to protectability is being considered.
- Documentation: Statements and letters in which a design admission could be assumed should be carefully documented and archived in order to avoid evidentiary issues.
Literature and Further Information
- Harte-Bavendamm/Henning-Bodewig (eds.), Industrial Property Protection. Commentary, latest edition, para. to DesignG
- Kur, Annette, Copyright and Design Protection, in: Schricker/Loewenheim (eds.), Copyright, § 2 paras. 85-110
- Büscher/Dittmer/Schiwy (eds.), Industrial Property Protection, Copyright, Media Law, keyword: Design Admission
Summary
Die Design Admission is a central institution of design law in the field of industrial property protection and refers to the (including implied) acknowledgment of a design or its protectability by a party to the dispute. It has significant practical importance in out-of-court disputes and in legal proceedings. Due to its far-reaching legal consequences, it should only be declared or conceded with due caution. The binding effect of admission extends to further proceedings and can have a substantial impact on the outcome.
Frequently Asked Questions
Within what legal framework is a design admission protected?
The legal basis for the protection of design admission in Germany is primarily set out in the Design Act (GeschmMG), while at the European level the Community Design Regulation (CDR) applies. These laws provide the owner of a registered or unregistered design with protection against imitation or unauthorized use by third parties. A prerequisite for protection is generally the novelty and individual character of the design at the time of application or disclosure. Protection arises through registration with the German Patent and Trademark Office (DPMA) or through an EU-wide registration with the European Union Intellectual Property Office (EUIPO). In the case of unregistered Community designs, mere disclosure within the European Union is sufficient. Protection covers only the aesthetic appearance of the product, not its technical functionality.
What options are available to a rights holder if their design admission is infringed?
If a design admission is infringed, the rights holder has several legal courses of action available. They can first issue a warning letter and demand cessation. Should these out-of-court efforts fail, it is possible to seek a preliminary injunction or to bring an action for injunctive relief and damages. The destruction of the infringing products or their recall from circulation may also be demanded. The legal basis for this can be found in Sections 38 et seq. GeschmMG and the relevant provisions of the CDR. It is also possible to request information about the scope and origin of the unlawfully manufactured or distributed products in order to calculate the actual damage.
How long does the legal protection of a design admission last?
The protection of a registered design admission generally lasts for a maximum of 25 years from the date of application, provided the necessary renewal fees are paid regularly every five years. Unregistered Community designs, on the other hand, are protected for only three years from the date of first disclosure within the European Union. After the expiry of these periods, the designs become part of the public domain and may be used by anyone, unless other intellectual property rights (such as copyright or trademark rights) exist.
What are the requirements for the enforceability of a design admission?
For a design admission to be legally enforceable, it must still be in force at the time of enforcement; that is, the protection period must not have expired. For registered designs, the register must also be current and the fees paid. It is further required that the relevant design actually meets the requirements of novelty and individual character. In the event of a dispute, a court may examine whether these criteria are met. In the case of unregistered Community designs, the burden of proof for the existence and knowledge of the design admission lies with the rights holder; therefore, comprehensive documentation and preservation of evidence is essential.
How is the scope of a design admission legally defined?
The legal scope of a design admission is limited by what is known as the scope of protection, which derives from the registration or disclosure of the design. The decisive factor is the overall impression the design makes on the informed user. Protection is granted not only for the exact registered appearance but also for imitations with a similar overall impression. However, functional elements that are technically necessary or required are expressly excluded from protection. The scope extends territorially to the respective protection area (national or Union-wide) and materially to the product classes described in the registration.
What role does design admission play in relation to other industrial property rights?
Design admission may coexist with other intellectual property rights such as copyright, trademark law, or patent law. In many cases, the areas of protection overlap, for instance, if a utilitarian object is protected both by design law and copyright law. In cases of conflict between existing rights and a design admission, an individual assessment must always be made. This is particularly relevant in the area of so-called ‘collision protection,’ in which it is determined which right takes precedence and whether cumulative protection is possible. Design protection is generally excluded if the design is determined exclusively by its technical function (§ 3 GeschmMG).
What means of evidence are relevant in disputes concerning design admission?
In legal disputes concerning the infringement of a design admission, various types of evidence are crucial. These include in particular the representations of the design in the registration or disclosure (e.g., photos and drawings), documentation of the creation process, publications and catalogs, as well as business documents relating to the market launch of the design. Especially in the case of unregistered designs, comprehensive evidence of disclosure and design admission is essential for success in court. In addition, expert opinions on the overall impression and technically determined features can be obtained.
