Protection for a design of a product can be obtained in the European Union by making the respective design available to the public for the first time. A European industrial design protection thus does not necessarily require a registration. Apart from that, the requirements for protection of both kinds are essentially identical. In particular, the design must be novel and have an individual character with respect to known designs. However, there is an essential restriction with respect to the term of protection being only three years for the non-registered design right, as compared to 25 years for the registered one.

During enforcement of non-registered industrial designs further hurdles may arise, as illustrated by a recent BGH decision (decision of December 13, 2012 – I ZR 23/12 – Bolerojäckchen). The case was brought by a textile trading company which in its chain stores made a specific type of jacket available to the public for the first time. The action was brought against a competitor who had sold similar jackets in his chain stores within the three-year-term of protection of the non-registered community design.

The action was dismissed as the textile trading company could not prove that is was the proprietor of the non-registered design right. The textile trading company had argued that it was proprietor, because it had made the design available to the public for the first time. The BGH did not follow this argument. According to the BGH there is no presumption that the person who made the design available to the public for the first time is the proprietor of the design right. For being the successful the textile trading company should have proven, in addition, that it acquired the design right from the designer. As no evidence of this “chain of rights” could be provided, the action was dismissed.

This problem would not have occured in case of a registered design right, because there is a statutory presumption that the person named in the register is the proprietor of the design right. The longer term of protection is thus not the only argument in favour of a registered design right.