A German design application may comprise up to ten graphical representations of the product to be protected. So far it has been generally possible (albeit not advisable), to include graphical representations of several different embodiments of the product with a single application. According to settled case law, the scope of a single application is limited to only one single and unitary subject-matter so that including different embodiments usually causes an ambiguity as to the scope of protection of the design right. However, according to previous case law of the Federal Court of Justice (FCJ) it has been generally possible to remove this ambiguity and to obtain a unitary subject matter by way of constructing the design right (see judgements of 15.02.2001 – I ZR 333/98 „Sitz-Liegemöbel“, para. II.1.a) or judgement of 08.03.2012 – I ZR 124/10 “Weinkaraffe”, no. 21-23). A unitary subject matter could particularly be derived from the “intersection” of the different embodiments (see I ZR 124/10, no. 30-33).
In derogation of this, the FCJ now decided (see orders of 20.12.2018 – I ZB 25/18 and I ZB 26/18) that a design application comprising different embodiments of a product (in the present case a sports helmet having different strapping, different equipment, different colors and color contrasts or, respectively, sports glasses having, on the one hand, color contrasts in a light-dark-combination and, on the other hand, in an inverse dark-light-combination) is invalid, as it does not reveal a single and unitary subject matter in the sense of §1 No. 1 of the German Design Act. The FCJ emphasized that the subject matter to be protected has to be visibly reproduced by the design application for reasons of legal certainty and clarity of the register. A subject matter which is only obtained by way of construction and, in particular, by forming an “intersection” of different embodiments while disregarding inconsistent features, cannot be regarded as being visibly reproduced by the application, but only exists in the observer’s imagination.
After these orders one should take even more care in the future to ensure that the graphical representations of a design application only comprise one single embodiment of the product to the protected. Several embodiments differing from one another, for instance, in shape or color must be protected by means of a multiple application.