Developments in the Law Relating to Registered Designs

Effective January 1, 2014, several changes in the German law relating to registered designs have come into force. At the same time, the law has also changed its name from “Geschmacksmustergesetz” to “Designgesetz”. Correspondingly, the official term for the IP right in question has been changed from “Geschmacksmuster” to “Design”.

The most significant changes include the introduction of an invalidity procedure involving the German Patent and Trade Mark Office, in which third parties can now assert the invalidity of a registered design (in particular as a result of a lack of novelty or individual character) within official proceedings aimed at the deletion of the design in the same way that has always been possible in patent and trademark law.

Until now, reviewing the validity of a German registered design was only possible by means of an invalidity claim in the civil courts (or incidentally by means of a corresponding objection within the infringement process). In principle, the possibility of making a claim for invalidity before a court still exists. In the future, however, this will only be permitted as a counterclaim in infringement proceedings initiated by the design holder. It will no longer be possible to assert the invalidity of the opponent’s design as a simple objection against infringement claims asserted by the holder of the design. Instead, this will only be possible by filing a counterclaim for invalidity within the infringement process or by the submission of an invalidity application to the German Patent and Trade Mark Office (which may result in the suspension of the design infringement proceedings).