Utility models and designs
Your intellectual property is one of your most valuable assets and therefore deserves special protection.
In Germany, this protection is generally established when the design is entered in the register of the German Patent and Trademark Office.
Registered designs (also called utility models) protect the appearance, in other words the external shape and color of products manufactured industrially or manually. These products may be, for example, items of clothing, furnishings, utensils of all kinds, machines, and vehicles, or graphic symbols. Furthermore, parts of products can also be protected as registered designs, such as the casing of a smartphone or the fastener of a bag.
The holder of a registered design enjoys a monopoly on the appearance for a certain period of time. Only the holder has the right to use the design and can prohibit use by third parties. This is provided that the design does not infringe any prior rights of others. This must be proven in each individual case and is not fulfilled by registration alone. Thorough research is therefore recommended before the application is filed.
Design protection – Monopoly on product design
When products hardly differ from each other in terms of function, an attractive product design becomes especially important. This is why protecting the design against plagiarism and copying is crucial for economic success.
Design protection essentially arises as a purely formal right through registration in the register of the German Patent and Trademark Office (DPMA). The extent to which the design is then also legally valid and fulfils the protection requirements of novelty and individual character must be clarified in the event of a dispute. It is therefore important to check the protection requirements of novelty and individual character even before applying for a design. It is equally important to precisely define the design’s scope of protection in the application.
As the holder of a registered design, you have an exclusive right of use. You can take action against any design that does not give a skilled user a different overall impression than your registered design. Registration results in a monopoly on the appearance in the entire territory of the Federal Republic of Germany for a limited period of time. The term of protection is initially five years from the date of application and can be extended a maximum of four times to 25 years. The annual fees must be paid on time and in full to maintain your design protection.
If you want to protect your design beyond the Federal Republic of Germany in the member states of the European Union or other countries, you have the option of applying for an EU-wide Community design or registering your design internationally.
Design application – Obtaining your design certificate
Design or utility model protection for shape and color gives you an exclusive right of use for a certain period of time. It protects your product design, which is often the key factor in purchase decisions, from imitations, plagiarism, and even unintentional equivalents. Therefore, even before you publish a new product design for the first time, you should work with us to determine the protection potential of your design and develop an application strategy.
In Germany, the design application is filed at the German Patent and Trademark Office (DPMA). In addition to the application for registration with all the necessary information about yourself, the documents must contain a rendering of the design suitable for publication. This should show as accurately as possible the specific shape and color of the product you wish to protect, as only what can be clearly seen on the rendering will be protected. In addition, a product description – a kind of goods classification – is required. If all legal and formal requirements are met, your design will usually be published in the register kept by the German Patent and Trademark Office within one to two months after receipt of the fee and published in the Design Gazette.
It is important that your registered design fulfils the protection requirements of novelty and individual character. No identical or only slightly different design may have been marketed or published before the application date. Furthermore, the overall impression made by your product on an informed user must be different from that of already known designs. The German Patent and Trademark Office does not examine whether your design meets these protection requirements or conflicts with the rights of others. Ideally, you should do this yourself before the application or market launch, also to avoid invalidity proceedings or lawsuits. We would be happy to support you with a thorough, professional research service.
If you need design protection outside Germany, you have several options: With a registered Community design at the European Union Intellectual Property Office (EUIPO) you can enjoy uniform protection in all European Union member states. Another option is international registration, which is done through the international office of the World Intellectual Property Organization (WIPO). This is not valid worldwide, however, but only in the participating states that you name in your application.
You have the option of filing applications either at the European Union Intellectual Property Office (EUIPO), at the World Intellectual Property Organization (WIPO), or – for a fee – via the German Patent and Trademark Office.
Litigation – Enforcement of rights in invalidity or infringement proceedings
The Design Division of the German Patent and Trademark Office does not examine at the time of registration whether a design meets the content requirements of novelty or individual character. If it turns out afterwards that these requirements are not met, a competitor, for example, can initiate invalidity proceedings. There are two versions of this: The “application for the determination of invalidity” refers to absolute grounds for invalidity (does not constitute a design, lack of novelty/individual character) and can be filed by anyone. An “application for a declaration of invalidity”, which asserts relative grounds for invalidity (copyrights, registered designs or distinctive signs with an earlier priority date), may only be filed by the holder of the rights concerned.
The application for invalidity, which is subject to a fee, must be filed in writing and, in addition to clearly stating the grounds for invalidity, must specifically indicate all relevant facts and evidence (e.g. earlier designs and rights). In its assessment, the German Patent and Trademark Office is exclusively bound by these grounds. If the holder of the registered design does not contest the application for invalidity within one month after notification, invalidity shall be determined or declared. If the application is contested in due time, the invalidity proceedings continue. Then the Design Division of the German Patent and Trademark Office decides on the application on the basis of the facts and evidence submitted. If the registered design is declared invalid, it is deleted from the Design Register and will not have any protective effects from the outset.
If a design holder is sued for design infringement, they can file a counterclaim before the competent regional court, arguing that the claimant’s registered design does not meet the requirements of protection. If this counterclaim is not made, the court will presume that the claimant’s registered design is legally valid.
If someone uses your design without your consent, you can demand that they remove the relevant equivalents, cease and desist, or even destroy or surrender the products. You may also claim damages if certain conditions are met. If an amicable settlement cannot be reached, you have the option of taking action before the courts, such as civil proceedings or – more rarely – criminal proceedings. A preliminary injunction allows you to obtain provisional legal protection, which can be advantageous over lengthy legal proceedings. A further option available to you is border confiscation. This prevents products that infringe your design from being marketed in Europe or exported outside Europe. However, if you are not proven right, you will have to pay for the other party’s losses.
Recherchen – Die Absicherung Ihrer Schutzrechte
The basic conditions for securing your design protection rights are the “novelty” and “individual character” of your design. Since the German Patent and Trademark Office (DPMA) does not check these protection requirements before registration, it is your responsibility and in your interest to ensure they are met before filing the application. Therefore, you should conduct thorough research to make sure you do not infringe any older rights of designs already registered. These could otherwise be established in invalidity proceedings before the German Patent and Trademark Office or sued for in a civil court. Conversely, it is also up to you to protect and, if necessary, enforce your own rights after registration of your design through regular research and market monitoring.
The first port of call for design searches is the official Register of the German Patent and Trademark Office. In this database you can search for publication data, design descriptions, and design illustrations free of charge and find out about the current legal status of registered designs and the status of any legal proceedings. In addition, you can download the weekly Design Gazette with the latest publications.
However, Community designs registered with the European Union Intellectual Property Office (EUIPO) or international registrations with the World Intellectual Property Organization (WIPO) can also be substantial grounds against the legality (originality) of your German design.
Therefore, you should also search in international databases, such as eSearch plus (EUIPO), Hague-Express (WIPO), Designview (EUIPO, WIPO and national patent offices), or the Global Design Database (WIPO search engine for design entries from national and international sources). The clear classification based on similar designs and memorable classification symbols allow you to conduct a systematic, language-independent search.
Essentially, any objects produced industrially or manually in common use or presented at trade fairs can be an obstacle to the protection of your registered design. It is therefore a good idea to also include internet search engines, eCommerce platforms, and exhibition and product catalogs in your research.
Since logos and graphic elements can also lead to conflicts with registered designs, we also recommend a trademark search.
We would of course be happy to support you with a thorough, professional research service.