Federal Court of Justice, Decision of 8 March 2012, No. I ZR 124/10, "Wine Decanter"

The German Federal Court of Justice clarified that there is no protection of individual elements of a registered design against third party products unless such element is separately registered as an individual design.

Italesse srl. manufactures wine glasses and accessories and is the owner of a registered Community design for a wine decanter. The design registration contains seven views – in four views, the decanter is depicted together with a base, in three views without a base.  

Click here to view image.

Italesse claimed that the defendant infringed its Community design by distributing a similar wine decanter. The defendant counterclaimed invalidity of Italesse's design.

Click here to view image.

The District Court of Frankfurt and the Court of Appeal of Frankfurt dismissed both Italesse's infringement claim and the defendant's invalidity counterclaim.

Upon Italesse's further appeal, the Federal Court of Justice upheld the decisions and dismissed Italesse's claim.

The court said that Italesse's Community design registration protected the combination of the wine decanter and its base. Although the design registration contained different views depicting the decanter with and without the base, it was confined to the protection of the design of the wine decanter in combination with the base. The purpose of filing different views of a design is to disclose the appearance of a design as a whole but not to establish protection for its individual parts. If different views of a design application lead to confusion as to what should be protected, the subject matter of the design protection needs to be determined by interpreting the design application. The (not mandatory) description of the design can be of help in this respect. This is an important aspect to bear in mind from a practical point of view when drafting design applications.

With regard to Italesse's design registration, the court found that the four views of the wine decanter with the base showed the subject matter of the design protection, i.e. the combination of a wine decanter with a base. The other three views which depicted the decanter without the base only showed details of the design. There was no evidence in the design application that Italesse had intended to obtain design protection for the wine decanter only.

Consequently, when comparing the overall impression of Italesse's Community design protecting the combination of the decanter with the base to the defendant's design of the wine decanter, they were sufficiently different so that there was no infringement.

Thereby, the court clarified the important and contentious question whether the protection of a design also extended to individual parts of that design. The court made very clear that there is no such protection of elements under the Community Design Regulation or under the Design Directive. If the applicant wishes to obtain protection for parts of his design, he must file separate applications relating to the individual element only. Rights owners should therefore consider carefully whether protection for the design as a whole is sufficient, or whether additional applications should be filed for individual elements of the design.