allegedly infringing colored design). This result seems
questionable since the very same b/w design-in-suit
is – correctly – being assessed as colored in relation
to a prior colored design (cf. above).
When it comes to the – in legal practice very
important – conflict between a colored design-in-suit
and a colored infringing design, the Hamburg District
Court had to deal with such a conflict between a colored Community design and a colored infringing
design. The Court – correctly – attributed distinctive
As a result, owners of b/w Community designs
need to accept that these are being reduced to the
respective color of the opposing design, and,
conversely, a colored Community design is no
help against a b/w piece of prior art, but, as the
case may be, against pre-published designs of
different colors.
character also due to the feature of color without
asserting exclusively on this basis an identical overall
impression of the design-in-suit and the infringing
design.
In another case, the Hamburg Appeal Court ruled
that it makes a difference whether a colored or a b/w
design-in-suit is being enforced against a colored
infringing design. Therefore, the feature of the color
counts among the features that have to be assessed,
maybe even belonging to the dominant features of a
design. However, also in this case, the Court asserted a differing overall impression not only with regard
to the different colors, but taking into account additional features.
CONCLUSION
As a result, owners of b/w Community designs need
to accept that these are being reduced to the respective color of the opposing design, and, conversely, a
colored Community design is no help against a b/w
piece of prior art, but, as the case may be, against
pre-published designs of different colors. On the
GERMANY
level of enforcing a design right, this is an argument
for deposing with the application, at least additionally, designs in color. In fact, on the level of infringement, the owner of a b/w Community design can
argue, in principle, that b/w also encompasses other
colors which means that you have a larger scope of
protection with a b/w than a colored design-in-suit.
In other words: Every b/w design in invalidity proceedings and every b/w infringing design will, like a
chameleon, take on the specific color of the concrete
object to which it is opposed in litigation. In order to
appreciate this result, one is well advised to always
simultaneously deposit a number of designs, on the
one hand in b/w, and, on the other hand in the
presently used or planned colors. ■
Bardehle Pagenberg Dost Altenburg Geissler
Galileiplatz 1
81679 Munich
Germany
Tel + 49 89 92805-0
Fax + 49 89 92805-444
Web www.bardehle.com
Henning Hartwig is a Partner at Bardehle Pagenberg
Dost Altenburg Geissler in Munich
hartwig@bardehle.de
The practice of Henning Hartwig, Dr. iur., centres on prosecution
and litigation of IP rights in the fields of trademark, design,
copyright and unfair competition law. A main focus of Mr Hartwig’s
professional activity is on Community and German design law, in
particular multinational design infringement proceedings, as well
as invalidity proceedings before the Office for Harmonization in the
Internal Market in Alicante.
As the editor of the unique yearly case book entitled Design
Protection in Europe, Mr Hartwig has access to EU-wide
unpublished decisions on design infringement. His clients in this
field are manufacturers of portable multifunctional communication
devices and sports cars.
Further activities concern the re-codified German Unfair
Competition Law, in particular disputes in commercial advertising.
In the fight against counterfeiting, Mr Hartwig represents a global
player of the cosmetics industry. A further major area of his practice
is trademark work, where he counsels an important international
client of the consumer healthcare sector.
Copyright protection in the industrial context is a current
challenge, with Mr Hartwig having represented one of the leading
European manufacturers of furniture. Mr Hartwig has documented
his expertise in more than 50 articles and is a frequent speaker on
the topics relevant to his practice.
