The Federal Court of Justice held that the depiction of a design is not permissible under the right of citation if it is only used for advertising purposes.

Deutsche Bahn AG is the owner of design rights in the high speed train ICE 3.

Click here to see a picture of Deutsche Bahn's German design for ICE train.

Fraunhofer Gesellschaft, a German organization for applied research, had developed a train wheel set inspection system for Deutsche Bahn's older train type ICE 1. In a marketing brochure for a trade fair it advertised the development of this system and used the depiction of Deutsche Bahn's ICE 3 rail car for illustration.

Deutsche Bahn claimed infringement of its design rights in the rail car and requested the payment of a license fee for the depiction of the photograph in the amount of 750 €. Upon this, Fraunhofer Gesellschaft sought a declaratory judgment that because of the right of citation in Article 40(3) German Design Act, Deutsche Bahn had no claims against it.

Article 40(3) provides that "the rights in a design right cannot be exercised in respect of acts of reproduction for the purposes of making citations or for teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source."

The Federal Court of Justice held that the right of citation required a connection between the depicted design and the advertised product in the marketing brochure so that the depiction served as a quotation of the developed product.

However, these requirements were not met by Fraunhofer Gesellschaft's marketing brochure for the development of the train wheel set as the advertisement used a depiction of the design of Deutsche Bahn's rail car type ICE 3, whereas Fraunhofer Gesellschaft had developed the inspection system for the older high speed ICE train type 1. Therefore, the Federal Court of Justice found, the depiction of the ICE train type 3 in Fraunhofer Gesellschaft's marketing brochure only served marketing purposes and could not be seen as a permissible citation illustrating its developed products.

The Federal Court Justice concluded that the depiction in the marketing brochure infringed Deutsche Bahn's design rights and granted Fraunhofer Gesellschaft's claim.