Since 01.01.2014 the Law on the Legal Protection for Design ( Design Act, dated 10.10.2013) has been in force and thus has replaced the present Law on design patent. In addition to the terminological change of “design patents” as industrial property rights in “designs”, the application for a declaration of invalidity with the German Patent and Trademark Office (§ 34 Design Act) was implemented. This application for a declaration of invalidity can be filed by anyone. The invalidity proceedings, settled in § 34a Design Act, already exist in the European Community Design Regulations (art. 25), in the Utility Model Act (§ 15) and in the trademark law.

With this new procedure the expert knowledge of the German Patent and Trademark Office shall be used. “Design departments” were established with three legally qualified employees each, who are qualified for the judgeship in accordance with § 26 II 2 Patents Act and who render their judgements in invalidity proceedings. The advantage of this proceeding is that costs can be saved because the official fee of 300.00 EUR (§ 2 I Law on Patent Costs) is far below the costs to be expected in a civil court action before the Regional Court, and this proceeding also results in cost certainty. Moreover, pursuant to § 34 c Design Act, a third party can take part in already pending invalidity proceedings if he can provide credible evidence that a similar case is already pending against him because of the infringement of the same registered design or if he was requested to cease and desist from the alleged infringement of the registered design. The Regional Courts remain competent if the defendant, by way of counterclaim (§ 33 III Design Act), refers to the declaration of invalidity of the registered design. The plea relating to the invalidity of the registered design is no longer admissible. Furthermore, with the introduction of the new Design Act, it is possible to register multiple applications together with up to 100 different designs – regardless of the class of goods – where previously it was only possible to register designs of the same category.

Also protected exhibitions (§ 15 Design Act) can now be taken from the Electronic Federal Gazette and not only from the Federal Law Gazette. This is to be seen as an economic progress in view of the quick, free-of-charge option of downloading for anyone via and the advantage of simplified updating.

In Court proceedings the possibility was introduced to limit the legal costs upon application (§ 54 I Design Act) by limiting the legal costs by determining an economically adjusted part of the jurisdictional amount as court fee calculation basis which, in accordance with § 54 II Design Act, means that the beneficiary party has to pay the fees of its lawyer based on the reduced lower value in dispute. The same goes for the costs of the opposition.

Author: Rechtsreferendarin Marja Beu