First published in BARDEHLE PAGENBERG IP Report 2008-V at

On October 9, 2008, Germany's Federal Supreme Court decided its first case on substantive Community design law. The Court stated that protection by way of an unregistered Community design can only be acquired if the design was first made available to the public within the geographical territory of the European Community.

The claimant, a Hong Kong based company manufacturing household products including a press for bakery products, filed, inter alia, a design application published May 8, 2002 with the Chinese Patent Office related to a specific press for bakery products. The claimant started selling the corresponding products in June 2002 to customers in the UK. During 2003, the defendant tried but failed to negotiate an agreement with the claimant regarding the distribution of the underlying product. Since the parties did not come to an agreement, the defendant started selling a press for bakery products manufactured by another company which was accused by the claimant to be nearly identical to his own press for a bakery product.

The claimant mainly argued that the contested press was an infringement of his rights conferred by an unregistered Community design. While the Hamburg District Court allowed the claim, it was rejected by the Hamburg Appeal Court.

On further appeal, the Court confirmed that the claim for cease and desist was invalid, because – even if the claimant obtained an unregistered Community design in 2002 – the term of protection of three years had expired in 2005. Apart from that, since further claims, such as for damages, were asserted as well, the Court had to decide whether an unregistered Community design right had been established in the past.

The Court held that the first disclosure of the design, i.e., the publication of the Chinese design application, did not meet the requirements of Article 11 Community Design Regulation (CDR). This provision grants protection for an unregistered Community design as from the date on which the design was first made available to the public within the Community which is presumed if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community.

The Court found the wording of the provision above to be unclear: Must this act of disclosure have occurred within the geographical territory of the Community or is the potential knowledge of the circles specialised operating within the Community sufficient? Notwithstanding this, with the amendment of the provision of Article 110 (5) 2nd Sentence CDR, the law clarifies the interpretation of Article 11 CDR in favour of the first alternative so that the act of disclosure must have happened geographically within the territory of the Community.

The claimant also argued that his press was first made available to the public by delivering it to the territory of the UK in June 2002 and, therefore, that this act should have established unregistered Community design rights. However, the Court rejected this argument, finding the press not having been new on that date due to the prior publication of the Chinese design application. In fact, and contrary to Article 11 CDR, there is no territorial restriction as regards the disclosure of novelty-destroying prior art pursuant to Article 7 CDR. The Chinese market is monitored by the domestic sectors of household articles, and official publications of registered IP rights can or could have become known. Furthermore, the CDR does not grant a one year grace period for own disclosures of unregistered Community designs as it does for registered Community designs.

As a result, only companies and designers presenting their designs within the territory of the Community for the very first time, e.g., on a fair, may acquire unregistered Community design rights. This first – and final – decision of a last instance court in proceedings on the merits as regards the requirements of acquiring unregistered Community design rights should put an end to the controversial discussions which, while already calming down in Germany, appear to continue in other jurisdictions, particularly in the UK: An act of disclosure outside the territory of the European Community cannot establish an unregistered Community design right whereas the very same act can be novelty-destroying.


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