What is design infringement

Design enforcement using the ballpoint pen case study


Suppose you have developed a ballpoint pen with a special design. You manufacture this pen in your company and sell it in Germany. You have had the special design protected by the DPMA as a registered design. With this you have secured an "exclusive right" with which you can prohibit third parties from producing or selling writing implements or other products with an identical or similar design etc. without your consent. This means that with your registered design you have the opportunity to take action against injuries - to enforce your rights, in different ways.

Please note, that the German Patent and Trademark Office is not authorized to provide legal advice. The enforcement of industrial property rights requires extensive legal knowledge. It is therefore advisable in most cases to seek legal help.

  • You can find lawyers with specialist knowledge of commercial legal protection (specialist lawyers for commercial legal protection) in your region via the bar associations.
  • You can find patent attorneys using a nationwide patent attorney search service provided by the Chamber of Patent Attorneys.

Case 1: You discover that someone else after you registered a design that is very close to your design.

Imagine that the continuous monitoring of your design reveals that a third party after you has registered and registered an identical or similar design.

In this case, you have the option of submitting an application to the DPMA for a declaration or declaration of invalidity (Section 33 DesignG) of the design that was subsequently applied for. The application for nullity is subject to a fee and must be submitted in writing with a justification.

Case 2: You discover that someone else is using your design without your permission.

The registered design is an effective tool to take action against plagiarists. If you discover that a third party is using your design without permission, you can, for example, demand that they remove the impairment, cease and desist (Section 42 (1) DesignG) or destroy or surrender the products (Section 43 DesignG). Under certain conditions, you are also entitled to a claim for damages (Section 42 (2) DesignG).

Please note, however, that the DPMA does not check the requirements for protection of novelty and individuality during the registration process. You can only obtain legally valid protection if these requirements are met.

1. How does it work in detail? (Conduct before a trial, civil trial, criminal trial)

What to consider with regard to a possible process:

  • Behavior in front of a process

As the owner of the property right, you can first try to resolve the problem amicably in direct contact with the infringer. If an amicable solution does not succeed, you can also assert your claims in court.

  • Civil litigation: design litigation

The regional courts are responsible for civil law proceedings in the event of design infringements (Section 52 (1) DesignG). A lawyer is required before the regional courts.

An intentional infringement of property rights is generally punishable, but is usually only prosecuted upon application (Section 51 DesignG).

Legal action can often take some time. If there is a need for urgency, an injunction offers interim relief.

Danger: If an injunction proves to be unjustified from the start, the opponent can assert a claim for damages against the applicant.

2. How does it work at a trade fair?

At trade fairs in particular, it happens again and again that competitors apparently violate designs. Therefore, prepare yourself for trade fairs in particular by keeping available all the necessary documents on your registered designs that you need to bring about an injunction (ยงยง 935 ff. Of the Code of Civil Procedure) and try to document the design infringement for possible legal disputes .

3. How can I prevent counterfeit or counterfeit products from entering the European market? (Border seizure)

In addition to civil and criminal proceedings, there is also the possibility of border seizure in accordance with Section 55 DesignG in order to prevent design-infringing products from entering the European market or being exported from outside Europe.

Danger: If the seizure proves to be unjustified from the start, you may have to compensate for the damage caused by the unjustified seizure.

Case 3: Your design right is attacked by a third party.

Before you apply for a design, you should make sure that no identical or similar design has been registered for another owner, because the DPMA does not check the novelty and uniqueness of your registered design in the design registration process. If your design is identical to or similar to a design that has already been registered, the owner of the design with earlier priority could apply for a declaration or declaration of invalidity of your design. In this case, your design might even have to be deleted again.

If you want to prevent this, you can do a commercial research or go to a patent information center near you. You can find out more about the designs registered with the DPMA in the design register free of charge.

Status: 08/10/2019