Design disclosure in GER: Case study tubular radiator

In an invalidity action against a design for a tubular radiator, the design was already published before the grace period – a clear case of design disclosure? The German BPatG ruled with interesting comments on § 5 DesignG.

Design Offenbarung Röhrenheizkörper — Design in dispute “tubular radiator”

The disputed radiator design (No. 40 2013 004 752-0002) for a tubular radiator was filed on 30 October 2013 and registered in the Design Register in 2014. The owner is Mert Radiator GmbH (Germany). The design proprietor claimed that its managing director Mr Mert had personally developed the contested design in July 2012 and had the radiators with the contested design manufactured by the company T… in Turkey and delivered to Germany.

However, the company T… had already supplied radiators with the design to various companies under the product name “DIFTA” before the filing date, so that the contested design was already known to the trade circles. In addition, the company Mert Radiator had also distributed radiators manufactured by the company T… and corresponding to the appearance of the contested design under the product name “BELLUNA”.

Based on these arguments, an action for revocation was brought against the protected design tubular radiator, on which the Federal Patent Court ruled (September 2020, 30 W (pat) 802/18). The applicant claimed that the design had already been disclosed and that it also lacked individual character.

The BPatG ruled on this with interesting comments on § 5 DesignG.

Already delivered before application – design disclosure?

The technical drawing of the “DIFTA” radiator dated 2 April 2013 showed the contested design even before the filing date of the application, but the invoices submitted as proof of delivery of the “DIFTA” radiator showed only two companies as recipients.

Nevertheless, the BPatG ruled that the design had not been disclosed as a result. Acts of disclosure to only two companies did not have the broad effect required for disclosure under § 5 Design Act, the court explained, because it was known that an extraordinarily large number of companies were active in the field of heating technology.

Published before the grace period – design disclosure?

Already before the grace period of § 6 DesignG (in Germany 12 months before the design application) the design had been published, which was proven by invoices. However, according to the court, this was a communication of the design necessary for the performance of the contract.

However, communications within the scope of business relations are to be regarded as confidential within the meaning of § 5 sentence 2 Design Act and do not entail any possibility of knowledge of the professional circles necessary for a disclosure under § 5 Design Act. Therefore, there was no design disclosure here either, the court ruled.

This even applies if the design was disclosed as a result of an abusive act against the designer, the BPatG added, referring to § 6 sentence 2 DesignG with regard to design disclosure.

What is striking in this decision of the BPatG is the difference to the interpretation of design disclosure by any publication on the internet, for example by products offered online or even only by product placement in a film sequence, which has been prescribed by the BGH since 2018.

Tubular radiators – a design with individual character?

The court also rejected the plaintiff’s objection that a tubular radiator lacked the necessary individual character. In the case of a tubular radiator, not only an inlet and an outlet pipe were technically predetermined, but also that the heating pipes ran horizontally. The pattern density was therefore rather high at the filing date of the contested design, because numerous other radiators were already known on which a towel could be slid. Overall, the designer’s freedom of design in the present case was therefore rather in the normal to low range.

Ergo, even less clear differences from the design vocabulary than in the case of a higher degree of freedom of design can justify the individual character of the design, and the BPatG considered this to be the case with this design. All in all, the contested design gave the overall impression of an open, stepped and very airy radiator, the BPatG ruled; moreover, it was particular that the heating tubes were grouped in groups of four and that the length of the heating tubes in each group decreased evenly from the bottom to the top.

The application for a declaration of invalidity based on the absolute grounds for invalidity of lack of novelty or individual character (§ 33 (1) in conjunction with § 2 (2), (3) Design Act) was therefore unfounded, the court ruled.

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