First published in BARDEHLE PAGENBERG IP Report 2008-V at

In general, the German law against misappropriation (on the grounds of unfair competition law), is an effective tool against copying, especially in support of "classic" design and copyright law. Now, Germany's Federal Supreme Court has clarified that such protection against misappropriation does not apply, by way of an exception, if the outer appearance of the accused product results from an independent work of creation by a designer who was not aware of the original.

In the case at hand, the defendant was accused for offering the below table in Germany which was nearly identical to a table sold by the claimant in Germany before the defendant's table came on the market. The defendant argued that he had created the design of the accused table independently, without knowing the claimant's alleged original and even prior to it entering the German market.

The Federal Supreme Court, for the very first time, decided that "copying" in terms of Section 4 No. 9 Act against Unfair Competition requires that the designer of the attacked design must have been aware of the original when producing the copy. If the designer (bearing the related burden of proof) can demonstrate that he did not know the original when creating his own design, the owner of the original cannot claim rights (for cease-and-desist, information, damages, etc.) provided by the German law against misappropriation.

In light of this new case law, much depends on whether the defendant can claim to be the designer of the contested design. Otherwise the Supreme Court's case law will not apply, given that the Court explicitly and repeatedly focused on the defendant's role and function as the attacked product's designer (not: distributor, dealer, etc.). Consequently, only the designer, not any other third party appears to be entitled to rely on that defence, with the further consequence that the designer of the contested design must distribute the product himself and cannot employ the organisation and skills of others for the marketing.

These consequences under national unfair competition law appear to differ from Article 19 (2) Sentence 2 Community Designs Regulation (CDR), pursuant to which the contested use of an unregistered Community design "shall not be deemed to result from copying the protected design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder." Although there is no decision on this point so far by any Community design court, it appears to make sense to extend the consequences of meeting the requirements of Article 19 (2) Sentence 2 CDR also to customers, licensees etc. of the designer of the contested product. In other words: If the product can be traced back to the designer who created it independently, no subsequent act of use can be prohibited.


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