Design cancellation procedure

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The design deletion procedure is a procedure of the German Patent and Trademark Office (DPMA) that can lead to the complete or partial deletion of a registered design from the register set up at the DPMA for designs (so-called design role).

Legal basis

According to Section 36, Paragraph 1 of the Design Act (DesignG), "a registered design ... will be deleted

  1. at the end of the term of protection;
  2. if the right holder waives the application, if the consent of other holders of rights to the registered design entered in the register and of the plaintiff in the case of proceedings under Section 9 DesignG is presented;
  3. at the request of a third party, if the latter submits a public or certified document with declarations in accordance with number 2 with the request ;
  4. with consent to the deletion according to Section 9 or Section 33 Paragraph 2 Sentence 2 DesignG;
  5. on the basis of an incontestable decision or final judgment on the determination or declaration of invalidity ".

The entry is deleted by a note in the design register, Section 19 Design Ordinance (DesignV).

The deletion requirements in detail

Termination of the term of protection, Section 36 (1) No. 1 DesignG

According to Section 27 (2) DesignG, the (maximum) term of protection of a registered design is 25 years, provided that the maintenance fees due at certain intervals are paid in good time, Section 28 (1) DesignG. If protection is not maintained (by paying the respective fees), the term of protection will end (prematurely), Section 28 (3) DesignG. Once the term of protection has ended, the design will be deleted ex officio. The ex officio deletion is generally unproblematic because neither an application nor the submission of a declaration of consent or a judgment or other documents is required.

Waiver at the request of the design owner, Section 36 (1) No. 2 DesignG

In addition to a deletion request from the right holder (design owner), the prerequisite for deletion is the consent of third parties

  1. (possible) other owners of rights to the design entered in the register or
  2. - in the case of a procedure according to § 9 DesignG - the plaintiff. This concerns the claim of the entitled person against the unauthorized person (in the sense of § 7 DesignG unauthorized design owner) for consent to the deletion due to illegal removal of intellectual property.

Request for cancellation by a third party, Section 36 (1) No. 3 DesignG

The application is (only) successful if the third party submits a public or certified document with declarations in accordance with Section 36 (1) No. 2 DesignG (see above, items 1 and 2).

Consent of the unauthorized design owner to the deletion, § 36 Abs. 1 Nr. 4 DesignG

It must be consent in accordance with Section 9 or Section 33 (2) sentence 2 of the DesignG.

Consent to deletion due to unlawful removal, Section 9 DesignG

If the design owner is not the designer (author) or his legal successor, he is not entitled to the design because according to § 7 DesignG (only) the designer or his legal successor is entitled to the design. "If a registered design is registered in the name of a person who is not entitled according to Section 7, the person entitled can ... request consent to its deletion", Section 9 (1) sentence 1 DesignG. However, the design owner will voluntarily give his consent to the deletion in very few cases. Section 9 (2) DesignG therefore stipulates that the right of the entitled person can assert his / her right against the unauthorized design owner for consent to the deletion of the design by filing a lawsuit (before the ordinary courts). According to Section 9, Paragraph 2, Clause 1 of the Design Act, the action to assert the claim can only be brought within a preclusive period of three years after the registered design is announced. According to sentence 2 of the regulation in question, this does not apply if the design owner "was in bad faith when registering or transferring the design ". The corresponding ( legally binding ) court judgment must then be submitted to the DPMA with the request for deletion. In the special case of the unlawful removal of intellectual property, the design deletion procedure is therefore designed to be "two-stage" - upstream court proceedings (first "stage") and subsequent application procedure at the DPMA (second "stage"). However, this can mean a lot of time, effort and expense for those interested in deletion, possibly also for the design owner.

Consent due to the nullity of the registered design, Section 33 (2) DesignG

According to sentence 2 of this provision, "the owner of the registered design can consent to the deletion because it is invalid". According to Section 33 (1) and (2) sentence 1 DesignG, a total of seven grounds for invalidity can be considered:

Invalidity according to § 33 Abs. 1 Nr. 1 DesignG

According to this provision, a registered design is void "if the appearance of the product is not a design within the meaning of Section 1 No. 1 DesignG". According to the legal definition of § 1 No. 1 DesignG "a design is the two-dimensional or three-dimensional appearance of a whole product or a part of it, which results in particular from the characteristics of the lines, contours, colors, the shape, surface structure or the materials of the product itself or its decoration results in ". If the design object does not meet these requirements, it is not a "design" within the meaning of the Design Act.

Invalidity according to Section 33 Paragraph 1 No. 2, 1st Alternative DesignG

According to this, nullity is given "if the design is not new". According to Section 2 (2) DesignG, "a design ... is considered new if no identical design has been disclosed before the filing date. Designs are considered identical if their features differ only in insignificant details".

Invalidity according to Section 33 (1) No. 2, 2nd Alternative DesignG

A registered design is therefore null and void "if the design ... has no individual character". Section 2 (3) DesignG grants a design "individual character" "if the overall impression it creates for the informed user differs from the overall impression that another design creates for this user, which was disclosed before the filing date. When assessing the individual character, the degree of freedom of the designer in developing the design is taken into account ".

Invalidity according to Section 33 Paragraph 1 No. 3 DesignG

According to the above standard, a registered design is void if it is "excluded from design protection in accordance with Section 3". According to § 3 Abs. 1 DesignG are excluded from design protection "

  1. Appearance features of products that are solely due to their technical function;
  2. Appearance characteristics of products which inevitably have to be reproduced in their exact shape and their exact dimensions so that the product in which the design is incorporated or in which it is used can be mechanically assembled or connected with another product or in, on or around it this can be placed around so that both products fulfill their function;
  3. Designs that are contrary to public order or morality ;
  4. Designs that represent improper use of any of the symbols listed in Article 6ter of the Paris Convention for the Protection of Industrial Property or other badges , emblems and coats of arms of public interest ".

Section 3 (2) DesignG contains an exception rule regarding the appearance characteristics according to number 2. According to this, these "are not excluded from design protection if they serve the purpose of enabling the assembly or connection of a large number of interchangeable parts within a component system".

Invalidity according to Section 33 (2) sentence 1 no. 1 DesignG

According to this provision, a registered design is declared null and void "if

  1. it represents unauthorized use of a work protected by copyright . "The protected" work "can be a work of art (painting, sculpture, etc.), for example.
Invalidity according to Section 33 Paragraph 2 Clause 1 No. 2 DesignG

The annulment is made here if

  1. the design "falls within the scope of protection of a registered design with an older seniority, even if this registered design was only disclosed after the filing date of the registered design to be declared invalid".
Invalidity according to Section 33 (2) sentence 1 no. 3 DesignG

This provision provides for a declaration of invalidity if

  1. in the registered design "a distinctive sign of an older age is used and the owner of the sign is entitled to prohibit its use". The "distinctive sign" may e.g. B. to be a registered trademark of the third party (right holder).

Deletion due to invalidity of the registered design, Section 36 Paragraph 1 No. 5 DesignG

According to this provision, a registered design is deleted "on the basis of an incontestable decision or final judgment on the determination or declaration of invalidity". "Invalidity is determined or declared by resolution of the German Patent and Trademark Office or by judgment on the basis of counterclaim in infringement proceedings", Section 33 (3) DesignG.

Determination decision of the DPMA

A determination resolution is issued - at the request of the party interested in deletion - (only) in the case of grounds for invalidity according to Section 33 (1) No. 1 to 3 DesignG (see above), provided the requirements for this are met. Anyone is entitled to apply, Section 34 Sentence 1 DesignG.

Declaration decision of the DPMA

If it concerns the grounds for invalidity according to Section 33 (2) sentence 1 numbers 1 to 3 DesignG (see above) and the requirements for this are met, the DPMA declares the invalidity of the design in question. However, only the owner of the right in question is authorized to apply, Section 34 sentence 2 DesignG.

Judicial declaratory or declaratory judgment

The prerequisites underlying the resolutions of the DPMA discussed above apply accordingly. According to Section 33 (3) DesignG, however, a declaratory or declaratory judgment can only be made if the person interested in deletion (counter-plaintiff) has previously been sued by the design owner for design infringement and has therefore raised counterclaims against the design owner for a declaration or declaration of the nullity of the design . In order to have the DPMA deleted, the applicant must submit the relevant court judgment.

(Possible) rejection of the requested deletion

If the legal requirements set out above for a requested design deletion are not met, the DPMA rejects the deletion and decides on this by resolution, Section 36 (1) sentence 2 DesignG.

See also

Individual evidence

  1. ↑ Ordinance on the implementation of the Design Act of May 11, 2004 (Federal Law Gazette I, p. 884), amended by Article 1 of the Ordinance of April 6, 2009 (Federal Law Gazette I, p. 765)
  2. ↑ Ekkehard Gerstenberg, Michael Buddeberg, Registered Design Law, 3rd edition 1996, p. 176
  3. ↑ Dietrich Scheffler, Particularities in the defense of claims from parallel utility models and designs in the event of unlawful removal of intellectual property, in: Journal "Mitteilungen der Deutschen Patentanwälte " (Mitt.), Cologne, Berlin, Bonn, Munich 2005, p. 220
  4. ↑ See § 256 ZPO

literature

  • Dietrich Scheffler, Novelty and peculiarity of designs according to old and new law - a comparative study, in: Rundbrief Deutscher Verband der Patentingenieure und Patentassessoren (VPP) No. 3, Munich, September 2004, pp. 97 ff
  • Dietrich Scheffler, Special features in the defense against claims from parallel utility models and designs in the event of unlawful removal of intellectual property, in: Journal "Mitteilungen der Deutschen Patentanwälte " (Mitt.), Cologne, Berlin, Bonn, Munich 2005, p. 216 ff
  • Ekkehard Gerstenberg, Michael Buddeberg, Design Law, 3rd edition, Heidelberg 1996
  • Hans Furler, The Design Law, 3rd edition, Cologne, Berlin, Bonn, Munich 1966

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