In the following, we would like to introduce the essential changes and innovations of the currently available bill regarding the modernization of the German Design Act. The enforcement of the corresponding changes is to be expected for the beginning of 2014.
1. Change of the German term “Geschmacksmuster” into the term “eingetragenes Design”
The term “Geschmacksmuster” is supposed to be replaced by the term “eingetragenes Design” in order to increase the comprehensibility inside and outside of expert groups and due to changes of language habits. Consequently, the law shall no longer be named “Geschmacksmustergesetz” (Design Act) but “Gesetz über den rechtlichen Schutz von Designs (Designgesetz – DesignG)” (Act on the legal protection of designs).
2. Invalidity actions before the GPTO
So far, for cancellation of a German design, an expensive and extensive invalidity action before a German regional court was necessary. With the present bill, an invalidity action before the GPTO shall be introduced in order to facilitate the procedure as well as to reduce costs. The official fee for the invalidity action before the GPTO shall be € 300 and a further € 500 for a possible subsequent appeal before the Federal Patents Court.
In future, the present design units shall carry out the registrations of a design. Furthermore, design departments are created which deal with invalidity actions and will be equipped with three legally trained members who can consult a technical member for special technical questions.
In case of a pending infringement proceeding there shall also be the possibility of a counter action (§52a DesignG) besides the invalidity action. On request by the owner of the registered design, the infringement court may suspend the proceedings after hearing of the further parties and request the counter-claimant to file the invalidity action with the GPTO within a deadline that has respectively to be determined. If the counter-claimant does not comply with the request within the set deadline, the counter action shall be deemed to have been withdrawn.
Furthermore, an infringement proceeding shall also be suspended when the infringement court considers the design to be invalid. In case of an invalidity action being rejected by the GPTO, the infringement court is only bound to this decision when it has been made between the same parties (§ 34b DesignG).
Hence, the proposed invalidity action in the German Design Act form an essential tool that makes the protection of designs valuable in Germany in the future, too.
3. Application day and multiple applications
In future, the product indication shall no longer be necessary for obtaining a filing date. This is particularly to be appreciated because the product indication does not have any influence on the scope of protection of the registered design but rather only fulfils an organisational function.
Furthermore, the requirement of classes shall be cancelled with regard to multiple applications as this has turned out to be non-practicable.
4. Exhibition protection
The suggested change with regard to the exhibition protection relates to the publication of the respective exhibitions, which shall in future be made in the Federal Bulletin instead of – as previously – in the Federal Law Gazette. This is reasoned by the fact that the Federal Bulletin can be accessed online and is therefore considered to be more economical.
5. Conclusion
The creation of an invalidity action before the GPTO is particularly to be welcomed due to the already available expertise. The linguistic adaption of the law by using the term “eingetragenes Design” is also welcome as thereby, comprehensibility is boosted.
The meaning of design protection will probably also increase in the next few years, in particular due to the newly proposed invalidity action before the GPTO, as designs gain importance especially as flanking protective measures. An example in this case is that it is easier and more efficient at customs to recognize and sort out an item due to its design than to determine an infringement of a patent and/or utility model. Hence, in particular with important patents and/or utility models, we generally recommend filing a design application. If you have any questions in this regard or require more details concerning the new DesignG, we will be pleased to help.
Source: Bundesrat Official Document 221/13 dated March 22, 2013
Author: Dipl.-Ing. Nils Winthuis (Patent Attorney), Update 2/2013
Patent Attorneys and Lawyers Bockhorni & Kollegen
Munich/ Germany
www.patguard.de
