SPECIAL ADVERTISING SECTION
DESIGN FILING STRATEGIES IN EUROPE –
COLOR VERSUS BLACK AND WHITE
WHEN WE look at the statistics of OHIM,
Europe’s Office for Harmonization in the
Internal Market based in Alicante, where
Community designs (and Community trademarks)
are registered, the Community design can be already
called a European success story. In 2003, the year of
its instigation, 19,935 Community designs were registered and published, augmenting to 74,424 in
2007. The total of Community designs registered
Dr. Henning
might reach 400,000 by the end of 2008. Hartwig
According to Article 3 lit a Community Design
Regulation (CDR), design means the “appearance of
the whole or a part of a product resulting from the
features of, in particular, the lines, contours, colors,
shape, texture and/or materials of the product itself
and/or its ornamentation”. Therefore, color is an
essential feature that must, at least in principle, be
taken into consideration when novelty and individual
character are assessed (validity test) and also as
regards the scope of protection (infringement test).
The law leaves it unclear, however, which value
the feature of color can claim in the context of other
features of a design, whether color can stand alone
or whether a good design strategy should take into
account any possible differences when it comes to
defend or enforce a design right. The following
examples will give some answers to these and related questions.
As a rule, two principle types of litigation have to
be discerned – in invalidity proceedings before OHIM
(or when challenging validity before an infringement
court) with a focus on the conflict between the registered Community design and a single piece of prior
art and in infringement proceedings before the
national courts with a focus on the conflict between
the registered Community design and a later allegedly infringing design.
INVALIDITY TEST
On the level of invalidity proceedings before OHIM
(or when challenging validity before an infringement
court), one has to mentally start from the later contested Community design which has to be defended
against a challenge by the prior design. In a case
decided by the Hamburg District Court, a colored
design was challenged by a number of pre-published
designs in b/w. The Court was of the opinion that
these b/w designs “are open to any kind of color
and, for this reason, the color of the contested design
does not have to be considered in the assessment”.
In conclusion, the b/w designs were treated, in their
relation to the contested colored design, as being
also colored, i.e., with the equivalent color as the
contested design (this also corresponds to established trademark law that older b/w illustrations are
to be treated as colored when compared with later
color illustrations).
The converse conflict between a contested b/w
design and a colored piece of prior art has been
decided by OHIM in a number of cases. Its case law
can be summarized to the point that owners of b/w
Community designs must “suffer” that their designs
are reduced to the respective color of the prior
design. This approach clearly speaks against filing
applications of b/w Community designs.
Lastly, when it comes to a conflict between a colored Community design and a colored prior design,
there are also numerous examples for this constellation such as from the Hamburg District Court or
OHIM’s Invalidity Division. According to this case law,
the feature of color in conclusion is taken into
account together with the other features of the
design which are amounting to the overall impression. However, it remains in doubt whether differences in color can in itself lead to a different appreciation of the respective overall impression. Rather,
both the Hamburg District Court and OHIM – rightly
– considered further features that are to be of such
obvious dominance that they result in a different
overall impression.
INFRINGEMENT TEST
On the level of infringement proceedings before
national infringement courts, one has to start from
the later, allegedly infringing design. Consequently,
in a conflict between a b/w design-in-suit versus a
colored infringing design the Hamburg Appeal Court
decided that it does indeed make a difference if a
b/w design-in-suit is enforced against a colored
infringing design (i.e., in this case, a b/w design-in-suit was not assessed as colored when opposed by an
