„Design is an economic factor“
In 2014, the German Design Act (formerly “Geschmacksmusterrecht”) underwent some changes and is now called “Designrecht.” Dr. Mathias Kleespies, LL.M., Director of the Brand and Design Department at Vossius & Partner, in an interview.
New laws make life easier for manufacturers and designers – 26,127 seizures at the border were under- taken by customs in 2013. In that, 3.9 million counterfeit products worth 134 million Euros were confiscated. Never before have the German customs authorities seized more counterfeit products. The furniture or furnishing sectors, resp., too, are affected by this problem again and again. Sometimes on a large scale, sometimes on a small scale. However, damage is done in any case. For that, there are various studies. Thus, the International Chamber of Commerce in Paris concludes, that, across all industries, companies worldwide incur losses in turnover of 600 billion Euros. For the German consumer goods industry, the Association of German Chambers of Commerce and Industry (DIHK) estimates the loss in turnover at 50 billion Euros. These are enormous sums. However, so far we have only talked about losses in turnover. The macroeconomic damage from lost tax revenue, arising damage to the image and loss of jobs, on the other hand, is much bigger. In Germany, an estimated 50,000, and Europe-wide approximately 300,000 jobs are lost due to product piracy. And considering that the product pirates don’t even stop at drugs and vehicle or airplane parts, from which results a risk to life and limb, the damage arising cannot even be quantified anymore.
But how can a company or designer, resp., protect themselves against product piracy? As of 1 January 2014, there had been a change in legislation in design patent law. In addition, there was a leading decision of the Federal Court of Justice, which affects the copyright. Dr. Mathias Kleespies, LL.M., Head of the Trademark and Design Department of Vossius & Partner, informs about this and about the consequences resulting therefrom.
IF: Mr. Kleespies, design can be protected. Were there changes in the legislation in the recent past?
Dr. Kleespies: Ja, die gab es. In Deutschland konnte man Designleistungen bislang durch das sogenannte Geschmacksmuster schützen. Das ist ein sehr sperriger Begriff, der nie richtig angenommen wurde. Wenn es um Formgestaltung geht, spricht man in der ganzen Welt von Design. Das wurde nun auch zum 1. Januar 2014 in Deutschland übernommen. Das Geschmacksmustergesetz heißt seither Designgesetz.
IF: Welche inhaltlichen Änderungen gab es?
Dr. Kleespies: Yes, there were changes. So far, in Germany, one could have design performances protected with the so-called taste pattern. That is a very cumbersome term, which was never really accepted. When industrial design is concerned, the whole world is simply talking about designs. This has now also been taken over in Germany as of 1 January 2014. Since then, the law of taste pattern has been called designs law.
IF: Which were the changes in contents?
Dr. Kleespies: The biggest change is that a registered design can now be attacked more easily for lack of protectability. I.e., so-called nullity proceedings can be striven for at the German Patent and Trademark Office, if, in one’s judgement, a registered design was unjustly protected. Prior to the amendment in legislation, a suit had to be filed with a German civil court. That was very cost-intensive, which is why there were only relatively few cancellation proceedings. Since the registered design is an unexamined protective right, there are many registered design rights in the register of the German Patent and Trademark Office, which actually do not fulfil the prerequisites for protection. Now, the examination of protectability is possible in a cost-effective manner with the nullity proceedings already mentioned, which are purely administrative proceedings.
IF: Such nullity proceedings can also be striven for, when the original design is not registered?
Dr. Kleespies: When novelty is concerned, the question must be asked, whether the design to be protected had already been known to the circles of experts prior to the date of registration, wherein it does not matter, whether the older design itself is protected as a registered design right or not. This, e.g., is the case when the design to be registered had already been made accessible to the public prior to the date of registration, for example, was exhibited at worldwide trade fairs or was shown in YouTube videos or catalogue photos, so that the circles of experts were able to obtain knowledge thereof. The circles of experts include those persons, who are responsible for product design in the respective economic sector, i.e. designers and other decision-makers in the area of product design. Everything can be stated as a “prior publication prejudicial to novelty”, which produces the evidence that exactly this form or a very similar form existed already. Thus, the previous design must not have been registered already, which, of course, facilitates the matter substantially.
IF: OK. Lets move on to the actual design protection. Where does it have to be applied for and what must be done to obtain protection also beyond the borders of Germany?
Dr. Kleespies: A design, which is to be protected in Germany only, must be registered with the German Patent and Trademark Office. Furthermore, there is the so-called Community design. This right corresponds to the registered design in Germany, but at the European level. The Community design must be registered with the Office for Harmonisation in Alicante, the European authority for protection of European brands and designs. There, EU-wide design protection is obtained very cost-effectively, which applies to all 28 member states. And that within only a few days. There may also be a so-called collective registration with both offices, for example, for a complete furniture series, at little additional costs.
IF: Which errors are made most frequently with such an application for protection?
Dr. Kleespies: The most frequent error is that the application for protection is made too late, in fact, only when the product has already been shown to the public and has been well accepted by the market. Many legal proceedings end negatively for the designer or the company, because the design was no longer new at the time of application, and thus is open to attack. Therefore, the following rule applies: Never show your design to a third party as long as it has not been protected.
A further important point is that one should consider carefully, what one wants to have protected. A product can also be overprotected. When I, for example, protect all perspectives of the product, then I restrict the scope of protection of my design right. Let me clarify this with the example of a chair: when all sides, also the bottom side, which mostly is completely irrelevant for the consumer, are protected, then, e.g., a copyist could get the idea to copy the design of the chair from the important perspectives (i.e. top, right, left, front, rear), however, to design the bottom side clearly differently, in order to leave the scope of protection of the protected design. Whether the result then is sufficient to evade the accusation of design infringement, of course depends on the concrete individual case. Nevertheless, less often can be more. Do you remember: There were major proceedings in the design area: the iPad of Apple versus a tablet of Samsung. Apple had had the basic form of the iPad protected on the basis of a line drawing. That was a simple basic geometrical form. Therewith, however, Apple had achieved such a large scope of protection that ultimately Samsung had to take its tablet off the market. Thus, specialists should be included in the concrete design of the application, because the scope of protection under the law results from the documents selected and submitted and has far-reaching consequences for the later assertion of rights. And last but not least, the customs declaration is important as well. There, registered protective rights, as e.g. designs and trademarks, should be registered in any case in order to prevent the import of counterfeit goods with border controls. Customs offer a very good service in the fight against product piracy by monitoring the borders for incoming counterfeits.
IF: A ruling of the German Federal Court of Justice (BGH) concerning copyright law likewise created quite a stir.
Dr. Kleespies: Yes, this really is very exciting. The ruling lies in a field of tension between design and copyright law. Design law is dealing with the design in industrial design. I.e., basically, the investment effort is rewarded, which a company or a designer renders with innovatively designed, commercial products. Detached therefrom, there are copyrights, which protect the artistic performances of – generally speaking – intellectual creations. With works of non-utilitarian arts, as for example music and literature, an originality criterion of the so-called “small coin” has always been acknowledged, i.e. copyright protection was granted for the simplest of creations. With works of commercial arts, which also includes furniture, on the other hand, very strict standards have been applied so far. Here, according to the previous jurisdiction, a very extraordinary performance had to be rendered, which clearly outdoes the average design. Only then, the designer was able to obtain copyright protection. So far, this resulted in the fact, that first and foremost, the famous design icons were protected by copyright. In the furniture area, these include, among others, the cantilever chair of Mart Stam, the Tulip series of Saarinen, the RZ 62 of Dieter Rams, the Bauhaus or Le Corbusier classics. This was the jurisdiction so far.
Now, in the “birthday train” decision, the Federal Court of Justice concluded, that this jurisdiction can no longer be maintained and that no higher requirements must be made to the copyright protection of works of applied arts than to works of non-utilitarian fine arts or the like. An originality criterion was sufficient, which, in the opinion of the circles receptive to arts and fairly familiar with concepts of art, justifies to speak of an artistic performance.
IF: Which are the consequences of this ruling?
Dr. Kleespies: I assume that in the future, copyright protection will be granted more easily for works of applied arts, which also includes furniture design. For that, however, it is not sufficient to only slightly modify an already existing design vocabulary. One still has to set oneself apart from what is common. Thus, though the review standard has changed, it still must not be assumed in the future, that any smallest of design performances will be granted copyright protection. An excessive grant of protection would also not be desirable, since this would entail many consequential problems.
IF: Which consequential problems are these?
Dr. Kleespies: There are always more extensive rights associated with copyright protection than it is the case with pure design protection. Here, the moral rights of the originator come into play. Thus, under certain prerequisites, an originator has a legal right to appropriate further compensation, when there is a striking disproportion between his/her compensation and the profits and advantages the exploiter gained from using the work. Furthermore, an originator basically has the right to decide, whether his/her work is to be provided with an originator designation and which designation is to be used. With basic commodities, this results in having to discuss with the manufacturer, whether and where the name of the originator or the desired designation, resp., is attached. In that, it is checked, what is common in the industry.
A third problem is, that copyright protection exists much longer than design protection. The copyright expires seventy years after the death of the originator. Design protection, on the other hand, basically runs for five years for a start, and may then be extended by the proprietor four times by respectively a further five years up to maximally 25 years. After 25 years, the term of protection of every registered design ends. Thereafter, the design is in the public domain, and anybody may use the design, if there are no reasons of competition law against it.
IF: When the copyright is now easier to obtain, does that mean, reversely, that designers can do without design protection in the future?
Dr. Kleespies: A definite ‘No’! As a designer, one should not rely on this ruling and in no case renounce design protection. Design protection has been explicitly created for the protection of design performances. The registered design or Community design, resp., is a fair, fast and cost-effective right, which can be obtained Europe-wide. And, it is a registered right, the existence of which can be proven by presenting the certificate of registration. Even if upon registration, the protectability of the design is not examined, courts must assume protectability and legal assistance of the designs law, as long as it has not been deleted from the register as a consequence of nullity proceedings. In practice, the design right is an unbelievably strong, cost-effective protective right, which may be obtained quickly. A copyright, on the other hand, is not a registered right. One cannot have a copyright registered. Therefore, within the scope of court proceedings, the court always must check and decide, whether copyright protection can be claimed or not. For design performances, in the future, too, one cannot rely on the court concluding that an artistic performance and thus a design entitled to copyright is present, as the outcome of the “birthday train” decision shows. For the “birthday train”, despite the new, more generous review standard, no copyright protection was granted in the end, and the claim to further compensation rejected.
IF: Which significance does the ruling have for the market?
Dr. Kleespies: It is indeed the case, that the decision can result in the consequential copyright problems stated above for the high-quality design-oriented furniture area, which is about artistic design performances, which problems are best regulated in advance with contracts between designer and exploiter, in order to avoid legal disputes later on. For designs in the area of the so-called mass market, which does not focus on artistic design performances, copyright protection will rather remain an exception in the future, too.
The complete interview and what Andrej Kupetz, Managin Director of the German Design Council says, can be found in InteriorFashion 6|2014.