With its "sports helmet" decision ("Sporthelm", decision of 20.12.2018, I ZB 25/18), the Federal Supreme Court expressly abandons the previous "overlap solution" of its "seating furniture" decision ("Sitz-Liegemöbel", decision of 15.02.2001, I ZR 333/98) and thus increases the requirements for design applications.
Since the "seating furniture" decision of 2001, the so-called "overlap solution" has applied.
If the individual application for a design (here: seating furniture) contained several representations showing the design in different forms (here: different seat segments, with or without armrests), the representations were legally regarded as a single representation. Deviations in the representations were not taken into account, so that the determination of the subject-matter of the design depended only on the similarities of the representations.
With the "sports helmet" decision, the Federal Supreme Court now expressly abandons this "overlap solution".
In the case of individual applications, it is no longer permissible to determine a uniform subject-matter on the basis of overlapping features common to all representations. If several representations show different designs of a product (here: sports helmet) with different characteristics of the appearance of this product (here: different straps, equipment with or without rider button), they no longer visibly reflect the appearance of "a" product. In this case, the design does not reveal a uniform object of protection.
The Federal Supreme Court justifies the abandonment of its previous jurisdiction as follows:
An object of protection formed from overlapping features is not visibly reproduced in the application, but exists solely in the imagination of the viewer. For reasons of legal certainty, however, third parties and in particular competitors must be able to clearly see from the representation or representations of the design in the register what the applicant is claiming protection for. The possibility of submitting up to 10 representations with different views per design in an individual application serves the purpose of clarifying the object of protection by reproducing the design from different angles. On the other hand, it does not serve the purpose of combining different embodiments of a product in a single application. For the purpose of grouping different embodiments of a product, the German Design Act offers the possibility of a multiple application of several designs.
The Federal Supreme Court has thus increased the requirements for design applications.
So far, it has been possible to use the "overlap solution" to identify an object of protection in the case of various designs that were inadvertently filed as individual application. This is now a thing of the past. Different versions of a design must be filed as a multiple application. It is no longer permissible to use the "overlap solution" to determine an object of protection in the case of different versions of an individual application.
The "sports helmet" decision of the Federal Supreme Court shows that the correct filing of design applications is even more important in the future and that legal advice should be consulted if necessary.