Repetitions are commonplace in the world of design and fashion. Ideas build on one another — that is normal and is usually permissible as well. Regrettably, however, many products are obviously and crudely copied. We are not talking here just about blatant imitations, but also about designs that are very similar to the original product.
This occurs especially frequently in the world of fashion. We see a lot of examples of this in our practice. Obviously competitors want to have a share in the success of a good product — evidently without having done the creative work themselves. We want to clarify a number of important questions about design law here — if we have forgotten something, please get in touch with us. We will be glad to help.
1. What is meant by “design law”?
The use of the concept of design in German law is a fairly recent development — nevertheless, many products were protected in the past. The German term previously used for this was Geschmacksmuster (industrial design), a word that was not instantly comprehensible. Lawmakers have now done away with this term and replaced it with “design”, a term that everyone understands.
The objective is to provide protection for fashion products such as blouses, shirts or trousers just as for furniture, ballpoint pens or telephones. Design protection is not subject to many restrictions. At the same time, there is a lot of overlap with other areas of law — trade mark, fair competition and copyright laws, for instance. It is often difficult to distinguish exactly between them. This has the advantage that even if “classic design law” does not apply in some cases it is still possible to assert a claim on the basis of other provisions.
2. How can a design be protected?
There are two ways to protect a design. One is to obtain protection at the national level. This requires a registration of the design (and payment of a fee) with the German Patent and Trade Mark Office (DPMA) in Munich. Then there is also the European Union trade mark at the EU level. A distinction is made here between a registered and a non-registered trade mark.
A European Union trade mark can be registered at the European Union Intellectual Property Office (EUIPO; formerly the Office for Harmonisation in the Internal Market = OHIM). As the name itself says, it is not necessary to submit an application and register a non-registered trade mark. The intent and purpose here is to provide protection for products that are especially short-lived without requiring a long and complicated registration procedure. In return, the term of protection is limited to three years — beginning with the day on which the product becomes available to the public within the European Union.
3. What are the requirements for protection of a design?
There are several requirements for obtaining protection for a design. It must be new and have an individual character. Moreover, there must not be any legal obstacles to its protection.
According to the legal definition, a design is new if no identical design has previously been made available to the public. Designs are regarded as identical if their features differ only in minor details.
A design has an individual character if the overall impression that an informed user has of the product differs from the overall impression created for this user by another design that had previously been made available to the public.
The law also provides that certain designs cannot be protected; protection cannot be obtained for designs that are contrary to public policy, for instance. Nor is it possible to obtain protection as a design for features of products that are solely a consequence of how the products function technically.
4. How can a design be registered?
A German design can be registered for protection in Germany by application to the German Patent and Trade Mark Office (DPMA) in Munich. The office will review whether the requirements have been met and register the design accordingly, provided that there are no obstacles to its registration. The design will subsequently be made available to the public. The application may be submitted in writing or electronically. The application package must include (in addition to the application itself) a reproduction of the design that is suitable for publication. As a rule, this requirement is met by submission of a photograph. The protection period for a design is 25 years — starting from the day of the registration.
A European Union trade mark can be registered at the European Union Intellectual Property Office (EUIPO) in Alicante. The protection period is initially five years, but it can be renewed up to a total of 25 years — starting from the day of the registration.
5. What are my options for acting against any infringements of my protected design?
The holder of a (registered) design can first of all prohibit other parties from utilising the design without the holder’s consent. The law reads: “Utilisation includes in particular (but is not limited to) the manufacture, offer, introduction into trade, import, export, or use of a product in which the registered design has been incorporated or for which it has been used as well as the possession of any such product with the intention of using it for the aforementioned purposes.”
The statute provides the basis for assertion of a number of different claims against anyone infringing on the rights. The holder of a design can, for instance, demand that the party desist from the infringement on the right in the future. In addition, the holder may have claims for destruction, information or damage compensation. These claims can first be asserted in the form of a warning, an out-of-court written notification to the party infringing on the right. If the warning is fruitless, the party may turn to court proceedings such as petitioning for a temporary injunction or filing a suit.
We can advise you!
Do you have questions about design law, would you like to register a design, or has there been an infringement on your rights? We can help you — just contact us. We can advise you in German and in English. Our team of specialists will be happy to support and advise you. Give us a call at no obligation: (+49) 0211 — 16 888 600. Or send us an email: anwalt(at)aufrecht.de.
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