German design and Community design regulation
Protect your industrial or handicraft item effectively and over the long term
A German design respectively a Community design (both in the following „design“) protects a product. A product is a two- or three-dimensional appearance of a whole product or a part of it. All new products with an individual character can be protected as a design – both industrially and handicraft created. Besides everyday products, also a complex product, packaging, fit get-up, graphic symbols and typographic typefaces can be considered. It is important that it can be reproduced.
If you have developed a new product with an individual character, protected it. You should secure the exclusive right of the product in its actual appearance. It protects your creative work and its commercialisation, gives you decision-making power over the product, increases your presence on the market and often brings you significant business assets.
If you do not protected it, you allow third parties to use it and take advantage of it. Even though the mere disclosure of the design creates an unregistered right in your favour, but only for three years. After that, the design becomes in the public domain and can be used by anyone without you being able to do anything about it. Besides, it is difficult to prove an unregistered design.
Registering the design therefore has many advantages: you can prove it. Above all, you can have the design renewed every five years – up to a maximum term of protection of 25 years; this is considerably longer than the three-year protection of the unregistered design.
It would please me to advise you on the creation and management of your portfolio and to carry out the application procedure for you.
If your exclusive right is infringed by a third party, I will enforce your claims for the removal of the impairment and an injunction against further infringements. If you have suffered damage because of the infringement, you are entitled to compensation. The claim is made by a warning letter, interim injunction or lawsuit.
If a claim is made against you because you are lamed to infringe a design of another party, I will advise you on the most effective course of action.
The product can be registered if it is new (1) and (2) has individual character.
A product is new if no identical design has been made available to the public. However, there is a so-called “grace period” of 12 months from the date before the filing date, during which disclosure is not harmful.
An individual character is given if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public.
I would be happy to advise you on these requirements.
You should have the disclosure in mind when you register your design. Disclosure means that the design is visible to third parties.
It is possible to defer the publication (the visual report) of the design and still meet the grace period by registering it. You must apply for the deferment of publication and the disclosure will be postponed for 30 months from the filing date.
This means that you can register the property right, but third parties cannot see the design – only the bibliographical data. This gives you time to prepare yourself for the market entry.
Note: During the deferment, you can claim only protection against imitation.
If you have to show the design to a third party (so it can produce the design, for example), there are contractual ways of securing it. I would be happy to support you.
You can choose in which country you want to get protection.
You can register a German design with the German Patent and Trademark Office and receive protection in the Federal Republic of Germany.
Protection throughout the European Union is also possible – here it is called “Community design”.
The registration process at the Office is quite fast and has a more favourable price than a trademark registration, as it is an unchecked property right. This means that the trademark office only looks at the formalities of the application and checks the product’s suitability. Novelty and individuality – as listed above, the two mandatory protection requirements – are not examined.
In contrast to the trademark, a registered design cannot be extended perpetual. Every five years it can be extended up to a maximum protection period of 25 years, starting from the filing date.
The unregistered design is protected for 3 years, starting from its disclosure.
If a third party uses your design without your consent, you can prohibit further use. By a warning letter, we will request him to not use it and he has to compensate any damage you have suffered.
You can also take legal action, such as preliminary injunction and lawsuits, to defend your rights.
If you have received a warning letter, have it checked whether it was justified at all. Here are some defence options that you can use.
However, do not leave the warning notice without a reaction on your part; otherwise, the person issuing the warning notice will get an interim injunction from the court against you. You can avoid the not inconsiderable consequences and costs resulting from this.