A party who, before the date of filing or priority date of a German design registration, in good faith commenced use of an identical design, which had been developed independently of said registered design, or has made effective and serious preparations to that end, has thus acquired a so-called right of prior use under the German Design Act. Therefore, this party is entitled to use its previous design despite of the registrant’s younger design protection (cf. regarding patent and utility model law article of 06/08/2012).

Although the EC design directive underlying the national Design Act does not provide for such a right of prior use, the Federal Court of Justice now found that the national rule is in line with EU law (judgment of 29/06/2017 – I ZR 9/16 – Bettgestell). This is not really surprising as the Community Design Regulation (CDR) also provide for a right of prior use vis-à-vis registered Community Designs.

Far more noteworthy is the second consequence which the Court drew from the national provision: The acts giving rise to the right of prior use must have taken place on German territory, i.e. acts in other EU member states are not sufficient. This contrasts with the CDR, which only requires use (anywhere) within the EU to establish an EU-wide right of prior use. As a practical consequence, national design registrations may be enforced in certain cased in which EU protection would fail due to a right of prior use.