On 1 January 2014, a new Design Act (DesignG) came into force and replaced the previous Design Act (GeschmMG) in Germany. This has resulted in some significant changes for applicants. Firstly, a new designation was introduced: the „registered design“.
The previous design patent was the oldest industrial property right in Germany and had been in existence since 1876. In the past, the filing of a sample of the product with the competent district court was a prerequisite for registering a design patent. This also explains the peculiar-sounding term. The previously „Design law“ The above-mentioned German law is accordingly „Design law“ renamed.
Nullity proceedings possible
In analogy to the cancellation and opposition proceedings before the German Patent and Trade Mark Office (DPMA) already known in utility model and trade mark proceedings, without the need to appeal to an ordinary court, official invalidity proceedings for registered designs before the DPMA have also been introduced. Design departments have been set up at the DPMA for this purpose.
Until now, designs could only be registered before the ordinary courts in the course of an appeal. Action for cancellation be attacked. This is still possible, but only if the party interested in cancellation as a counterclaimant has previously been sued by the design owner for design infringement and has therefore filed a counterclaim for a declaration or declaration of invalidity of the design. Since jurisdiction for these proceedings used to lie exclusively with the regional courts and, in contrast to the DPMA, lawyers were mandatory there, cancellation proceedings were associated with high legal costs. The changes associated with the new Design Act the costs are reduced for a review of the protectability of registered designs is only 300 euros, without taking into account the costs of consulting a patent attorney or lawyer.
Advantages of the new regulation
Compared to the previous regulation, the following advantages result in particular: Due to the central responsibility for invalidity applications of the DPMA, there will be a standardisation of case law regarding the registrability of designs. This is because the design divisions of the DPMA have a high level of expertise. This was often not the case with the specialised or commercial chambers of the regional courts. The nullity proceedings are more cost-effective and efficient than the previous legal proceedings. Neither the applicant nor the design owner must be represented by a lawyer. Nevertheless, it is recommended to consult a patent attorney or lawyer.
Since, in addition to the question of novelty and the uniqueness of the design Technical questions in invalidity proceedings, for example in the case of exclusively technical features that cannot contribute to the delimitation of the set of shapes (further information on this here), it makes sense for the design divisions to also involve technically qualified examiners from the DPMA. The preparation of expert opinions and the summoning of external experts are generally not necessary.
In analogy to the current practice in patent infringement proceedings, infringement proceedings before the ordinary courts can be suspended upon request if there is sufficient prospect of success of the application for revocation. It is also advantageous that the simplified application procedure can also be used if Collective registrations if individual designs are categorised in different classes of goods. In addition, a new qualifying offence has been introduced for the commercial and gang-related commission of an offence. Trademark infringement which provides for a minimum custodial sentence of three months. This is intended to ensure that in proceedings with a low sentence expectation, not only a fine can be imposed, but also a suspended prison sentence.
Author: Hans-Peter Gottfried (Patent Attorney, Dresden)
