In a judgment from June 2021, the OLG Frankfurt a.M. has given important guidance on the scope of protection of designs consisting of black and white line drawings (OLG Frankfurt a. M. judgment from June 24, 2021 – 6 U 1/21). Such outline representations are likely the most common way of reproducing designs, as they often offer the greatest scope of protection due to the natural abstraction of such a drawing. However, as the present judgment shows, this approach can also have disadvantages.
The applicant took action on the basis of its Community designs with, inter alia, the following representations
against the following competing products
The court dismissed the application for a preliminary injunction because the registered designs the applicant wanted to rely on were already not legally valid due to the following citations:
The overall impression of the applicant’s designs and the citations were substantially the same. A narrow light section is not one of the defining features of the applicant’s designs. These were registered in a black-and-white graphic representation and therefore claimed protection for the specific design, irrespective of a color and contrast. A light section is not clearly recognizable for the informed user. The line shown in the designs could delimit a differently colored or tinted area or represent a stepped frame. Also from the battery compartment recognizable on the back it cannot be concluded that the mirror is limited by an illuminated light cutout. In the absence of a clearly recognizable illuminated outer edge, the applicant’s designs did not create a different overall impression from the citations and were therefore not legally valid.
This decision sheds light on one of the most difficult aspects of design protection, namely the selection of the representations to be submitted. Stylized representations promise a greater scope of protection, but also carry the risk of more citations. It is also important that, despite all abstraction to enlarge the scope of protection, those aspects must still be seen in the representations whose protection is important to the applicant. The fact the applicant’s designs were to have an illuminated outer edge strip was precisely not apparent from the representations. In order to be on the safe side, it is recommended to file a multiple application in which different versions of the same product, e.g. black and white drawings as well as color variations or certain luminous effects, could be protected.