Parallel property rights

Parallel property rights are a design and a technical property right that - independently of one another - protect the same product from being copied by unauthorized third parties. The technical property right is a utility model or patent .

Properties of the parallel protected product

Since a patent or utility model can only protect technical features that must have the quality of an invention , § 1 Paragraph 1 PatG , § 1 Paragraph 1 GebrMG , the object in question must be characterized by technical properties.

On the other hand, design protection is only available for the appearance of the product in question, Section 2 (2) DesignG in conjunction with Section 1 No. 1 DesignG. The product in question must therefore also have aesthetic characteristics.

Reasons for parallel protection

By § 1 para. 3 no. 2 of the Patents Act and § 1 para. 2 no. 2 GebrMG "aesthetic creations" are expressly excluded from patent or utility model protection. In turn, design protection expressly excludes appearance features of products that are solely due to their technical function ( Section 3 Paragraph 1 No. 1 DesignG).

If a manufacturer wants to protect both the technical and aesthetic features of his product, he must apply for utility model or patent protection and design protection - in each case at the German Patent and Trademark Office (DPMA).

Which products are eligible for parallel protection?

In principle, all physical objects are accessible to “parallel” protection against imitation, provided that they are “aesthetic creations” on the one hand, but also have inventive technical features on the other.

In today's practice, design for trade and manufacturing is becoming increasingly important. The growing need of the economy for design protection is probably due to the fact that today high sales figures can be achieved more through an attractive design than through technical finesse of the product in question. Some authors attribute this trend to modern affluent society.

Conversely, it is not uncommon for certain products, e.g. B. decorative objects, although primarily characterized by aesthetic effect, but also have certain technical functions. Examples of this are lamps and lights of various types and designs, room humidifiers and the like. a. m. The technical features may take a back seat to the design character of the product in question, but they can certainly be subject to a technical property right.

From the above, it follows that for a "parallel" protection through design and (usually) utility models, primarily decorative objects of daily life (see the above examples) are predestined.

Advantages of parallel protection for the owner of the property right

If a competitor only modifies the technical features of his competing product while circumventing the protection claims of the third-party utility model, he is nevertheless still subject to the proprietor's right to prohibit, namely from Section 38 (1) and (2) DesignG, provided that the aesthetic appearance of the competing product matches the protected product corresponds. Conversely, simply changing the aesthetic appearance of the competing product without at the same time circumventing the protected technical features would not release the competitor from the owner's right to prohibit, in this case from § 11 GebrMG.

Defense against claims from parallel property rights

There are three options for the competitor to evade the proprietor's right to prohibit claims: First, he can develop circumvention solutions. However, the development effort for this is considerable. He has to modify both the appearance and the technical characteristics of the parallel protected product to a relevant extent.

The second option is to apply for a license to the proprietor of the property rights, which in many cases will also be granted. Practice shows, however, that this option - which is desirable from an economic point of view - is only used relatively rarely, although cost reasons are likely to play an essential role.

Finally, the third alternative, which is used quite often in practice, is to defend the rights holder's claims by taking legal action against the parallel protective rights. However, this undertaking regularly proves to be very time-consuming for the attacker. Because he will have to initiate separate proceedings against each of the two protective rights if he wants to fight for their cancellation or annulment. Both procedures must be carried out completely independently of one another.

The utility model cancellation procedure

Sections 15 , 16 and 17 of the GebrMG are relevant for the defense of claims from the utility model . According to § 16 sentence 1 GebrMG, the deletion of the utility model according to § 15 GebrMG must be requested in writing from the DPMA. The procedure is carried out at the DPMA and is determined in detail in accordance with Section 17 GebrMG.

The nullity action against the registered design

The legal basis for this is Section 33 DesignG. According to Section 33, Paragraph 2, Clause 2 of the DesignG, anyone, including the competitor exposed to the claims of the design owner, is authorized to file a lawsuit with an ordinary court to determine the nullity of the design . If the nullity has been legally established by a judgment of the court, Section 33 (2) sentence 1, the "protective effects of the registration of a design ... as not having occurred from the start", Section 33 (3) sentence 1 DesignG.

The procedure for deleting a design

Under certain circumstances, the deletion of a registered design is also possible upon request to the DPMA. The prerequisites for this can be found in detail in Section 36 (1) No. 2 to 5 DesignG.

The negative declaratory action

Finally, there is also the possibility of taking legal action against the owner of the two property rights in the ordinary courts to determine that he is not authorized to claim against the competitor for omission and / or compensation because the two property rights cannot be protected. The prerequisite for this is a legal interest ("determination interest") of the plaintiff ( § 256 ZPO ). The advantage for the plaintiff is that he can take action against the two parallel property rights together in one proceeding. However, it is up to him to convince the court that each of the two property rights cannot be protected. A conviction of the proprietor of the proprietary right does not, of course, lead to the deletion or annulment of the parallel proprietary rights with this defense variant, so that the at least theoretical possibility of making claims against other competitors is still open to them.

Individual evidence

↑ 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: Mitt. Der Deutschen Patentanwälte 2005, p. 216.
↑ So Gerstenberg, E., Buddeberg, M., Design Law, 3rd edition, Heidelberg 1996, p. 31

swell

Law on the Reform of Design Law ( Design Reform Law). Of March 12, 2004. [1]

Design patents. An information brochure on design protection. Edited by the German Trademark and Patent Office (PDF; 782 kB)

literature

Benkard, G., Patent Law, Utility Model Law, 10th edition, Munich 2006
Furler, H., The Design Act, 3rd edition, Cologne, Berlin, Bonn, Munich 1966

[Scheffler-1] 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: Mitt. Der Deutschen Patentanwälte 2005, p. 216.

[2] So Gerstenberg, E., Buddeberg, M., Design Law, 3rd edition, Heidelberg 1996, p. 31