BGH on ambiguous design registrations
Design disputes often circles around ambiguities between different views of the same design deposited with the design application. The Federal Court of Justice (BGH) had now to review a case in which two out of three views showed a cutting board, whereas the third showed the cutting board combined with a collection pan (judgment of 24/03/2022 – I ZR 16/21 – Schneidebrett). It was thus unclear whether the subject-matter of the registration was the mere cutting board or the combination with the collection pan.
The BGH found that such an ambiguity does not inevitably cause the design to be invalid. Rather, it must be decided by way of interpretation, from the perspective of persons skilled in the art, whether only a single part or the combination is protected. Such an interpretation should comprise factors like the indication of the product made in the application and a description submitted therewith (if any; not present in the case at hand). While an esthetic and functional relationship between the elements may suggest that the combination is protected, such a requirement is not mandatory. If, however, such an interpretation does not render a sufficiently clear result, the design has to be found invalid.
The decision should be understood as an invitation for design applicants to use a description in order to rule out any conceivable ambiguities between the various views of the same design.