Under the German Design Patents Act which was in effect until May 2004, it had been accepted that also parts of design registrations could have been independently protected under the following conditions: First. those parts incorporate a shape with an independent and complete design character, and second, they qualify by themselves for design protection, in particular for novelty and peculiarity. This had been a substantial simplification for applicants of design patents because filing photographs showing new products as detailed as possible was usually sufficient to cover all protectable sub-combinations of elements of the design (written claims were not and are not required under German or EU design patent law).
After introduction of the new design law (Community Design Regulation in 2002 and new German Design Patents Act in 2004), the question arose whether this practice should be and could be continued. It was not answered uniformly by German courts (positive: e. g. Court of Appeals Düsseldorf, judgment of 10/4/2007 – I-20 U 156/06; negative: e. g. Court of Appeals Frankfurt a. M., judgment of 15/5/2008 – 6 U 182/07)
The Federal Court of Justice (BGH) has now decided against it such a continuation (judgment of 8/3/2012 – I ZR 124/10 – Weinkaraffe). The court reasoned that the new wording of the law does not leave any room for this former practice. Further, there is no need anymore because the new design law explicitly provides the possibility to protect appearances of product parts. In addition, it would be be beneficial for the legal certainty if every protected subject-matter is associated with a separate registration.
As compared with earlier law, applicants will now have to exercise more diligence when selecting the element combination(s) to be protected. Each combination for which protection is sought should be filed separately. If, which will be most often be the case, several combinations come into question for a particular product, they may be filed in a multiple application.
In its judgement, the BGH has also commented on the interpretation of design applications. It found that the subject-matter shall be determined not only with reference to the representation of the design but also by further circumstances, e. g. the description or the indication of the products in which the design is intended to be incorporated or to which it is intended to be applied (which indication shall given in the application). If some representations comprise a certain feature and others do not, the feature shall not necessarily be excluded from the protected subject-matter. The necessary interpretation can rather yield that it is a part of the design, i. e. the representations missing the feature would be taken as partial views only.