German design law: Federal Court of Justice overturns the “overlap theory”
When filing an individual German design application, up to 10 photographs or other graphic representations can be submitted that show the design to be protected. Up to now, the overlapping characteristics found in all of the depictions on file were used to judge a design’s eligibility for protection (see BGH decision from 2001-02-15, Az. I ZR 333/98 – Sitz-Liegemöbel)
In the decision Sports Helmet (“Sporthelm,” BGH decision from 2018-12-20, Az. I ZB 25/18), multiple embodiments of one product (here a helmet) with various characteristics (different straps, colors, decorations) were shown in one individual design application. According to the Court, the depictions do not clearly illustrate the appearance of one product. As a result, the design does not indicate a single object to be protected (see §1 Nr. 1 of the German Design Law) and therefore is revoked. It is not allowed to determine one object to be protected on the basis of the overlapping characteristics that could be found in all depictions.
The Court pointed out that there is the possibility to file a multiple application to protect multiple depictions of a product. A multiple application allows up to 100 designs to be included in one application.
For the design applicant, it is important to decide together with an attorney if an individual design provides enough protection for the design in question or if a multiple application with different design variations should instead be filed.