The German Courts consider protection of EU designs

The German Courts have held the assessment of the scope of protection of an EU registered design depends on the overall impression of the respective prior art citation(s). A comparison of the registered design in a patchwork-like manner, namely to pick some elements of various prior designs and compare them with characterizing elements of the registered design, is not permissible.

In its judgment of 24/01/2019 (I ZR 164/17), the German Federal Court of Justice (Bundesgerichtshof "BGH") clarified that the assessment of the scope of protection of the design must not be based on a comparison of the individual characteristic elements of the design with individual characteristics of various prior art citations. According to the BGH, what is decisive is the respective overall impression of each prior design.

Although it is permissible to cite several prior designs in order to reduce the scope of protection of the registered design, it is, however, not permissible only to pick individual elements of the prior art and to cite these in an isolated manner in opposition to the characteristic elements of the registered design. It is not permissible to perform an "overall assessment in a patchwork-like manner" of individual elements of various prior designs.

The defendant's modular waiting area system is as follows:

The claimant based its claims on registered designs of the modular waiting area system "Meda Gate" which, inter alia, included the following designs:

The defendant referred to several citations of prior art, which each disclose some individual characteristic elements of the registered design as follows:

The Regional Court of Düsseldorf (

Landgericht Düsseldorf

; Ref. no.: 14c O 95/16) found in favour of the claimant. The Higher Regional Court of Düsseldorf (

Oberlandesgericht Düsseldorf

; Ref. no.: I-20 U 50/17) set aside the judgment at first instance and dismissed the action. The Court stated that each individual characteristic element of the registered design was partially disclosed by various prior designs.

The German Federal Court of Justice rejected these findings. The Court held that the assessment of the design with respect to the prior art must not be based on a comparison of the individual characterizing elements of the design with single elements of the prior art. The Court added that the comparison must rather be made in each case on the basis of the overall impression of the registered design with each single prior design.

The assessment of the scope of protection of the design depends only on whether the overall impression of the design in its entirety may be anticipated. The Higher Regional Court inaccurately picked some isolated elements from the prior art, such as the type of construction, armrests etc. and cited these elements in the design. This, according to the Court, is an accumulation of single elements of prior art designs in a patchwork-like manner that is not permissible.

Practical tips

With this judgment, the German Federal Court of Justice has helped to strengthen EU registered designs. Although it is permissible to cite several prior designs in order to reduce the scope of protection of a design, it is not permissible only to pick individual elements of prior art and to cite these in an isolated manner. Instead, the closest prior art citation must also show the design elements that characterize the registered design.

Judgment of the German Federal Court of Justice (Bundesgerichtshof, BGH), dated 24/01/2019 - I ZR 164/17 - Meda Gate