INDUSTRIAL DESIGNS IN GERMANY The birthday train design
novelty and individual character) but may not necessarily be infringed by the same object under both laws. T is appears to be true as, in assessing the scope of protection of a design, the degree of
freedom of the designer in developing his
design must be taken into consideration (Article 10[2] CDR). T is scope can be broad, average or narrow, depending on the existing design corpus and the departure or “distance” of the design from the specifi c prior art.
Constitutional aspects It is interesting to learn that, under the Federal Court of Justice’s pre-Birthday Train doctrine, a case was brought before the German Federal Constitutional Court to decide whether the German copyright practice of diff erentiating between works of applied art and works of fi ne art was in line with German constitutional law.
On January 26, 2005, the Constitutional Court found in Running Eye that Community designs would exist in parallel with works protected under national copyright and design law, and that protection was also available for unregistered designs, albeit limited to three years. T is, according to the court, ensured that designers of utilitarian or consumer goods of artistic value as well as those who derive their rights of use from them could use the results of artistic activity to an extent that would meet the requirements of Article 14(1) of the German Constitution, a provision which guarantees the protection of property. Consequently, as protection was available as a matter of principle under German copyright law and national and European design law, German copyright law could ‘discriminate’ between works of applied art and works of fi ne art.
It is exactly that argument which the Federal Court of Justice now, in the Birthday Train decision, turned upside down and, in light of parallel protection under German copyright law and national and European design law, argued against such discrimination. Interestingly, the Federal Court of Justice did not even address the Constitutional Court’s analysis but, instead, held that “courts are not bound by established case
22
law, which proves to be no longer tenable in light of better knowledge”.
Further prospects Industrial designs
can now claim copyright
protection if, as a result of a suffi cient degree of
creativity, the appearance produces an
“aesthetic impression” resulting from an “artistic performance”. It is another question whether the individual degree of creativity is suffi cient to establish a broad, average or only narrow scope of protection. T erefore, in case of a low degree of individuality of the copyright-protected work, minor diff erences in case of a later device would be suffi cient to escape from infringement as re-confi rmed by the Federal Court of Justice in 2011 (Educational Games).
T is concept of reciprocity is also known from Community and German design law (both on the level of acquisition and enforcement of design rights). Furthermore, according to Birthday Train, whether a product discloses a suffi cient degree of creativity is, as a rule, a question of fact to be decided by the trial judge. Parallel to that, fi nding whether two designs produce the same or a diff erent overall impression is also for the trial judge. T e Federal Court of Justice, competent (and limited) to decide questions of law, and as decided in Pram I (2011), only has to verify whether the judge of facts applied the correct legal concepts, whether general rules of logic and common experience have not been infringed and whether all relevant circumstances have been taken into account.
It seems to follow from these conditions that a design may be protected under both copyright and design law (provided it shows suffi cient creativity,
World Intellectual Property Review Annual 2014
Dr Henning Hartwig is a partner at Bardehle Pagenberg Partnerschaſt mbB Patentanwälte Rechtsanwälte in Munich. He can be contacted at:
hartwig@bardehle.de
Contrary to that, according to the Federal Court of Justice in Birthday Train, a “personal intellectual creation” requires freedom which the author uses for “expressing his creativity in an original manner”. In case of articles of daily use, showing features of appearance dictated by the intended use, such “freedom for an artistic design”, as a rule, would be limited. It seems that copyright protection for works of applied arts, even when available without discrimination between industrial designs and works of fi ne art, will nonetheless continue to be more diffi cult to be enforced in comparison with parallel design rights.
The practice of Henning Hartwig comprises prosecution and litigation of IP rights in the fi elds of trademark, design, copyright and unfair competition law. His focus lies on national and international design law, including proceedings before OHIM and the European Courts in Luxembourg. As editor of the four-volume casebook Design Protection in Europe, Hartwig has unique access to unpublished decisions of Community and national design infringement courts.
www.worldipreview.com
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