The BPatG confirms the nullity of the design with its judgement on the design sports helmet. The focus was on the presentation of the design in variations and previous case law on the theory of intersection. However, the cost decision in this case is also important for practice.
The current judgement of the Federal Patent Court (BPatG) confirms the nullity of the design sports helmet. The Federal Supreme Court (BGH) had already determined nullity for this design a year ago, but referred the case back to the Federal Patent Court because the BGH is denied its own decision on the merits (according to § 23 (5) DesignG in conjunction with § 108 (1) PatG).
Design with variations: no uniform object of protection
The subject matter of the protection was filed as a single application of the design, but nevertheless with different embodiments of the product. This did not visibly reflect the appearance of “a” product, the BGH had ruled (I ZB 25/18). In such a case the design does not indicate a uniform object of protection within the meaning of § 1 No. 1 DesignG and is therefore invalid under § 33 (1) No. 1 DesignG. The ruling of the BGH on the sports helmet thus followed the view of the ECJ on Community designs, as stated in the Mast-Jägermeister ruling.
With its decision (30 W (pat) 802/15), the German BPatG now confirmed the invalidity for the sports helmet design, which had already been decided by the BGH. The court ruled that no uniform object of protection could be derived from the registered design and thus not the appearance of “a” product within the meaning of § 1 No. 1 DesignG, so that it lacked the design capability according to § 1 No. 1 DesignG due to the fact that the object of protection could not be determined.
BGH and BPatG distance themselves from the previous case law
Thus the BGH and now the BPatG distance themselves from the previous case law of the intersection theory. By forming an intersection of the coinciding features of the helmet’s appearance, a basic form valid for all representations was assumed according to the intersection theory. In practice, this is often desired, since the actual creative idea from the design applicant’s point of view lies in the basic shape of the product, which is then to be marketed in multiple colour and pattern variations.
However, only the features of the appearance of this object which are visibly reproduced in the application can be protected under § 37 (1) DesignG, because the representations of the design must clearly and unambiguously indicate the object for which protection is sought. For a summary of different embodiments of a product, a multiple application of several designs is therefore advisable under § 12 (1) DesignG.
In the case of sports helmets, however, only one single design was applied for, which showed a sports helmet. For the representation of this design, however, the applicant had submitted seven representations as black and white photos of the sports helmet, showing the helmet in various colour gradations and patterns, among other things.
Cost decision: doubling the value of the object
Also of great interest in practice is the cost decision which the BPatG sets out in its ruling. If it is not possible to make a sufficiently reliable determination of the type and extent of use of the cancelled design, the corresponding value of the object must be determined at the discretion of the parties both in the case of a declaration of invalidity or cancellation of a design and a trademark (§ 34a (5) sentence 2 DesignG or §§ 50, 54 MarkenG and § 33 (1), § 23 (2) RVG).
In the case of unused trade marks or trade marks for the use of which no sufficiently reliable findings can be made, a standard value of € 50,000 is considered appropriate, the BPatG stated. However, the value of the subject matter of nullity proceedings under design law should be assessed significantly higher than that of cancellation proceedings under trademark law. While trademarks identify goods and services according to their origin from a certain company, the registered design concerns the design of a product with regard to its visual appearance and usability and thus the product as such, the court explained.
Taking into account all aspects, in particular the remaining term of the design subject matter of the proceedings, a doubling of the object value of € 50,000 generally assumed in trademark cancellation proceedings for unused trademarks and thus a standard object value of € 100,000 was appropriate, but also sufficient, the BPatG ruled.
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