Concept and Significance of Design Litigation
Design litigation refers to a specific area within intellectual property protection that deals with legal disputes surrounding registered designs — formerly known as aesthetic models. The subject of design litigation regularly involves infringement, validity, or exploitation of design rights, which may be registered at both the national and European levels. The legal basis for this is, in particular, the Design Act (DesignG) in conjunction with relevant European regulations such as the Community Design Regulation (GGV).
Legal Basis of Design Litigation
Design Act (DesignG)
The Design Act governs the registration and protection of designs in Germany. Section 6 (§§ 51-55 DesignG) deals with specific procedural issues regarding design litigation and the competent courts. According to § 52 DesignG, disputes concerning the infringement or invalidity of a design fall under design litigation.
Community Design Regulation (GGV)
The GGV is decisive for Community designs. Disputes concerning registered or unregistered Community designs are subject to special regulations and jurisdictions at the European level. For design litigation with Union-wide relevance, Chapter IX of the GGV is particularly pertinent.
Types of Design Litigation
Design litigation may include the following main areas:
Design Infringement Action
Design infringement proceedings usually involve disputes regarding the existence, scope, and infringement of a design. Typical claims include injunction, damages, and information.
Nullity Proceedings
Nullity proceedings concern disputes over the validity of a registered design. Nullity can be sought, for example, due to lack of novelty, individuality, or because of conflicting prior rights.
Design-Related Contractual Disputes
This includes disputes involving license agreements, exploitation, transfer, as well as disputes related to design rights arising under employment or corporate law.
Other Design Disputes
These include issues of remuneration, information regarding design registrations, and other procedural disputes relating to designs.
Jurisdiction of Courts in Design Litigation
Local and Subject-Matter Jurisdiction
For design litigation in Germany, the regional courts (Landgerichte) have exclusive jurisdiction, regardless of the amount in dispute (§ 52 DesignG). Within the regional courts, there are concentration requirements: The federal states designate specific regional courts to act as design courts. In proceedings concerning Community designs, there are also special Community design courts.
Jurisdiction in Europe
In disputes concerning Community designs (Union designs), the court of the Member State where an act of infringement has been committed or is threatened is competent. Enforcement is governed by Art. 80 et seq. GGV. International matters are also subject to the Brussels Ia Regulation.
Procedural Particularities
Parties and Standing to Sue
Generally, the owner of the registered design or Community design has standing to sue. The exclusive licensee may also bring an action under certain circumstances, if provided for in the license agreement.
Subject Matter and Value in Dispute
The subject matter in design litigation depends on the type and scope of the asserted claims (e.g., injunction, information, damages). The value in dispute is determined by the court and is oriented toward the economic significance of the disputed design.
Burden of Proof and Evidence
In principle, the claimant has the burden of proof for the alleged infringement or validity of the right. Means of evidence in particular are documents (certificate of design), expert opinions, witnesses, as well as inspection of the disputed design.
Preliminary Legal Protection
Design law provides for the possibility of preliminary injunction proceedings, especially for the swift enforcement of injunctive relief in the event of an imminent infringement.
Legal Consequences of Design Litigation
Claim to Injunction
If an infringement of the design is established, there is a claim to an injunction against the infringer.
Claim to Damages
The right holder may claim compensation for the material damage incurred. The amount of damages, as in trademark and patent law, can be calculated based on the customary license fee, lost profits, or the infringer’s profit.
Claim for Destruction
Physical objects unlawfully embodying the protected design can be claimed for destruction or surrender to the rights holder.
Claim to Information and Accounting
To quantify damages, there is a claim for information about the origin and distribution channels of the infringing products.
Distinction from Other Matters in Dispute
Design litigation is clearly distinct from disputes relating to trademark rights, patents, or copyrights. While these concern other intellectual property rights, design litigation focuses exclusively on the right to the aesthetic appearance of a product, defined by its lines, shape, colors, and surface texture.
Significance for Practice
Design disputes hold considerable importance in the modern economy, as the aesthetic recognizability of products increasingly serves as a competitive factor. Judicial protection is a central tool to prevent imitation and secure the economic value of a design.
Literature and Web Links
- Design Act (DesignG) https://www.gesetze-im-internet.de/designg/
- Community Design Regulation (GGV)
- Federal Ministry of Justice: Information on Design Law https://www.bmj.de/DE/themen/technologie/designrecht_node.html
- German Patent and Trademark Office (DPMA): Design Law https://www.dpma.de/designs
Note: This article is for general information purposes only and does not constitute legal advice.
Frequently Asked Questions
Which courts have jurisdiction in disputes over registered designs?
For disputes relating to registered designs in Germany, only the so-called design courts have jurisdiction. These are specifically designated regional courts (Landgerichte) with experience in intellectual property protection. The subject-matter jurisdiction therefore regularly lies with the regional court. Normally, the civil chamber for intellectual property protection serves as the design chamber. Local jurisdiction is determined by the general rules of civil procedure, in particular the defendant’s domicile or the place of the (alleged) infringement. For European Community designs, the Community design courts (specific regional courts) are competent. Appeals against first-instance judgments are made to the next higher Higher Regional Court (Oberlandesgericht).
What claims can be asserted in the context of design disputes?
Various civil law claims may be raised in the context of design disputes. These include in particular claims for injunctive relief, which can be used to prohibit the infringer from further use of the disputed design (§ 42 DesignG). In addition, there are claims for removal, for example, for the destruction of infringing goods. Further claims include information and accounting claims, which serve to prepare damage claims. Damages can be claimed either based on concrete loss, lost profits, the license analogy, or the surrender of the infringer’s profit (§ 42 (2) DesignG). Additionally, claims for recall and publication of the judgment may exist.
What defense options does the defendant have in a design litigation procedure?
The defendant can raise both substantive and procedural objections in a design litigation procedure. The most common objection is attacking the protectability of the design, e.g., by presenting prior designs that call the novelty and individual character of the challenged design into question. The lack of use of the design can also be asserted. Further defense options include the plea of limitation or reference to possible exhaustion of rights. It can also be argued that the asserted claims (e.g. for injunctive relief) are unfounded due to the absence of risk of repetition. Procedurally, classic litigation defenses such as objections relating to jurisdiction, disputing the prerequisites for the claim, or substantial challenges to the applications are possible.
What is the significance of the scope of protection and limitations of protection in design disputes?
The scope of protection of a design is determined by the application and the appearance documented in the application documents. The decisive factor is the overall impression the registered design creates on the informed user (§ 38 DesignG). The comparison with the alleged infringing product is made with reference to the existing design corpus at the time of filing. Limitations of protection exist particularly in technical designs, where protection for features solely determined by technical function is excluded (§ 3 DesignG). Designs that are contrary to public order or accepted principles of morality are also excluded from protection (§ 7 DesignG). In the event of a dispute, the specific scope of protection must always be determined to assess whether limitations of protection preclude enforcement of the claim.
How does the procedure for cancellation of a registered design work?
The cancellation procedure can be initiated either before the German Patent and Trademark Office (DPMA) or as part of court proceedings. At the DPMA, cancellation occurs upon application if, for example, the requirements for design protectability were not met from the outset or have subsequently ceased to exist (§ 34 DesignG). In court proceedings, a counterclaim for nullity is possible, which is brought during infringement litigation. In this context, the defendant may invoke the invalidity of the registered design. Cancellation has retroactive effect (ex tunc) and terminates protection of the design for both the past and the future. The legal grounds for cancellation are decisive, especially lack of novelty, lack of individual character, or exclusion from protection.
What deadlines must be observed in design disputes?
Different deadlines apply for asserting claims from a registered design. As a general rule, claims for injunction and damages under § 31 DesignG become time-barred after three years from knowledge of the infringement and the identity of the infringer. Irrespective of this knowledge rule, absolute limitation occurs at the latest ten years after the event of infringement. A cancellation application can, in principle, be filed for the entire duration of design protection, as long as there is no final decision to the contrary. Shorter statutory deadlines may apply in opposition or nullity proceedings. Missed deadlines may, in exceptional cases, be reinstated upon application and without fault for the delay.
Can preliminary injunctions also be issued in design disputes?
Yes, in the context of design disputes it is possible to obtain a preliminary injunction to quickly prevent ongoing or imminent infringement of the design. The prerequisites are substantiation of both the claim for relief (existing design protection and an injunction claim due to infringement) and the grounds for relief (urgency, e.g., imminent serious harm). The requirements for urgency and substantiation are particularly high in the field of intellectual property protection and must be carefully observed. The court examines in summary proceedings whether the prerequisites for the provisional measure are met; the final determination is made, if necessary, in the main proceedings.
