Effective

Defense in the

Design law.

Challenges posed by design law
Claims

Die Inanspruchnahme von Unternehmen wegen vermeintlicher Nachahmung von Designs (früher: Geschmacksmuster) stellt die Betroffenen vor große Herausforderungen. Unternehmen, die Abmahnungen erhalten, sehen sich dabei nicht nur rechtlichen Herausforderungen im Designrecht sondern zumeist auch unmittelbaren wirtschaftlichen Auswirkungen ausgesetzt. Ob die geltend gemachten designrechtlichen Ansprüche tatsächlich bestehen, ist oftmals jedoch nicht so klar, wie es der Wortlaut der Abmahnungen zunächst erscheinen lassen mag.

First of all, it should be noted that a design is a so-called unexamined property right. This means that a registered design has not been examined by the responsible patent and trademark office to determine whether it even fulfills the substantive requirements for protection of a design. It must therefore always be assessed beforehand whether the allegedly infringed design grants protection at all. However, even in this case, an infringement of rights cannot necessarily be assumed. This is because the question of whether one’s own goods are so similar to the design that, for example, the same overall impression is created, is usually not clear-cut and can often be decided with arguments in one direction or the other. This often opens up realistic opportunities to successfully defend against the claims asserted.

Design law claims

If you receive a cease and desist letter under design law or are already in a legal dispute in court, the following claims are usually asserted:

• Injunctive relief:
  Injunctive relief serves to effectively prevent further acts of infringement. The infringer must refrain from using the design in the future. Third parties may not manufacture or sell any products in which the design is used without the consent of the design owner. This claim is satisfied out of court by submitting a cease-and-desist declaration with a penalty clause.
• Removal claim:
  The removal claim serves to eliminate existing infringements of rights or their consequences. The infringer must ensure that the infringement is removed, e.g. by removing infringing advertising or by recalling and destroying the products concerned.
• Claim for damages:
  With the claim for damages, the design owner can assert the damage caused by the design infringement. In principle, the damage can be calculated in three different ways: the loss of own profit, the profit of the infringer or a fictitious license fee. In the case of a design, the damages by way of a fictitious license fee generally amount to between 5 and 10% of the sales of the infringing products, but can also be significantly higher in individual cases for designs of high-quality products with prestige value.
• Information and accounting claims:
  The information and accounting claim serves to determine and quantify the damage and provide information about suppliers and customers who may have committed infringements. The infringer must provide detailed information on the type, scope, duration, turnover and profit from the infringement and render accounts. The infringer is obliged to provide supporting documents such as invoices, delivery bills and orders so that the information can be verified.
• Destruction and recall claims:
  The infringer must take precautions to prevent further design infringements and must recall and destroy the infringing products and advertising materials from the distribution channels, insofar as this is necessary to eliminate the design infringement.
• Reimbursement of costs of the cease and desist letter:
  The design owner has a claim for reimbursement of costs against the infringer of its laws to the effect that, in the event of a justified cease and desist letter, it can demand reimbursement of the associated costs (e.g. lawyers’ fees, test purchase costs) from the infringer.
  

Effects of the claims for the
claimant

Design law claims can have considerable consequences, which many companies are often not immediately aware of when they are confronted with a cease and desist letter or the claims of a design owner. The consequences of these claims can be quite serious.

• Conversion costs:
  If companies are forced to change the design of their products due to injunctive relief and removal claims, this can entail considerable costs. Products, advertising materials and online presence that contain the disputed design must be changed or replaced. This often leads to high costs with the result that investments already made in marketing aimed at the now unacceptable design are lost. In many cases, the company has to start with a completely new design approach.
• Business interruptions:
  Depending on the breadth of a company’s product range, even the prohibition of the use of the design of individual products can lead to business interruptions which, in the worst case, can jeopardize the continued existence of the company.
• Reputational damage:
  A company’s reputation can also be significantly damaged by design disputes that become public. As commercial customers of the products can also be affected by claims, there is a risk of lasting damage to relationships with business partners.
• Information and accounting:
  The information that may have to be provided to the design owner can be very extensive and include the disclosure of business relationships as well as the submission of invoices and other internal documents. This can have a negative impact on business relationships in the long term, especially if commercial customers are also the target of the claims, who then in turn assert recourse claims, which can lead to further legal and economic consequences.
• Procedural costs and claims for damages:
  The amount of damages in design law depends on the lost profit of the design owner, a reasonable license fee or the profit made by the infringer. Depending on the case constellation, considerable amounts can be incurred here, which are in addition to the often high cease and desist letter and procedural costs for justified claims.
• Recall and destruction costs:
  Companies can be forced to take back and destroy products that have already been produced and distributed if they infringe the laws of a design. This not only causes immediate financial losses, but can also significantly damage customer confidence.
  

How we defend our clients against
design law claims

First, we examine whether and to what extent the design law claims actually exist. In doing so, we evaluate the defense options and work out the legally and economically most sensible alternative courses of action for you. We then develop targeted strategies for the best possible defense against the asserted claims or, if a defense does not appear possible, for the best possible limitation of the economic consequences. To this end, our law firm offers a range of services specially tailored to the defense against design law claims and cease and desist letters:

• Examination and analysis:
  We analyze the validity of the claims made against you and examine whether a design infringement has actually occurred. We also check whether the infringed design can be protected at all.
• Strategic advice:
  Based on our analysis, we develop a tailor-made defense strategy to defend against claims in the best possible way.
• Negotiation with the other party:
  We take over the communication with the cease and desist letter in order to reach an out-of-court settlement and represent your interests in the best possible way.
• Preparation of protective briefs:
  In the event of impending interim injunctions, we prepare protective briefs in appropriate cases in order to prevent the issue of an interim injunction without an oral hearing.
• Representation in court:
  In the event of a legal dispute, we will represent you competently in court.
  

Our expertise – your advantage

Our law firm has many years of expertise in the field of design law, both in court and out-of-court proceedings. We understand the various defense approaches in order to achieve the best economic result for you. Our specialized lawyers combine in-depth legal knowledge with practical solution strategies to successfully handle even complex disputes. This benefits you:

• Legal expertise:
  Through continuous further training and a close exchange within our professional network, we ensure that we are always up to date in the field of design law and closely follow current developments.
• Experience before courts nationwide:
  We have been successfully representing our clients in proceedings before courts nationwide for many years. Thanks to this long-standing practice, we have gained extensive experience with the jurisdiction of the courts and the procedures of the competent authorities.
• International network:
  We have a strong international network and work with law firms worldwide to assist you with cross-border or purely foreign-related disputes.
• Individual support:
  We provide you with individual support and develop customized solutions that are precisely tailored to your needs and specific requirements.
• Success-oriented action:
  Our aim is to consistently defend against unjustified claims and, in the case of justified claims, to enforce the best economic solution for you.