The assessment of a design infringement is known to be grounded on a one-by-one comparison between the overall impression of both designs at issue. However, the evaluation which feature of a design gains more or less weight when assessing the overall impression normally depends on whether it can be found in disclosed prior art, or on the fact, to what extend such feature is imposed by a technical function (see: German Supreme Court, judgement of 12/7/2012 – I ZR 102/11 – child’s pushchair II).
Now, in a recently published decision the German Supreme Court clarified (judgment of 28/1/2016 – I ZR 40/14 – wrist watch) that the assessment of the overall impression must also be determined predominantly in the light of the manner in which the informed user perceives the product in question in the course of its intended use. That interpretation corresponds to the case-law of both the German instance courts and the EU General Court, according to which the appearance of a product in use receives particular consideration (see: Higher District Court of Frankfurt/Main, judgment of 27/3/2008 – 6 U 77/07 – drip mat; GC, judgment of 2/4/2014 – T-339/12 – armchair).
In the case decided by the Supreme Court, the infringement of the registered design depended on the assessment of the different watch clasps. According to the Court, hose differences relating to this feature were not sufficient to produce a different overall impression, because the clasps were marginally visible when wearing the watch. Further, the Court ruled that also the impression of a product presented in advertisements or when purchased must be considered in that regard. Thus, the Court decision gives rise to pay special attention to the representation of those design features that are visible in the course of the intended product use or its presentation, when applying for a registered design.