Principally, in Germany, a third party which has developed, used or at least made serious attempts to use a similar or identical design before filing a national design patent, can rely on a right of prior use. This right of prior use enables the further use of a third party irrespective of the existing design patent. The requirement for that, however, is, that the acts of prior use were made on the home market, i.e. in Germany.

Decisions by the BGH which deal with the existence of a right of prior use with respect to German design patents which can arise due to one’s own acts of prior use are not very common.

The circumstances were that the plaintiff had a design patent which shows a bed frame (in the following referred to as design at issue). The design patent was registered on July 15, 2002 in Germany and registered on November 15, 2002. At the same time, the exhibition priority of the International Furniture Fair in Cologne, Germany, on January 14, 2002, was acknowledged.

The defendant belonged to the IKEA group which is known worldwide and has been distributing a bed frame since 2003 under the designation “MALM”, which is mostly similar with the design at issue. The defendant distributed a catalogue with a bed frame of the type “BERGEN” in August 2002, which differed from the MALM bed frame, which infringes the bed frame, only by the slightly higher headboard. The plaintiff filed a suit against the defendant due to infringement of the design patent. The appeal court, i.e. the Higher Regional Court (OLG) in Düsseldorf, Germany, rejected the suit, this decision was, however, not followed by the Federal Court of Justice in the appeal instance.

The Higher Regional Court Düsseldorf awarded the defendant a right of prior use within the meaning of § 41 German Design Act in Germany. This was mainly reasoned by the fact that IKEA made serious preparations in Sweden for the global distribution of the previous model “BERGEN” in Germany, too, already before the priority day of January 14, 2002, without being aware of the design at issue. That means the Higher Regional Court Düsseldorf was of the opinion that IKEA was seriously intending to take up the commercial use of the previous model “BERGEN” as soon as possible, especially because the production of a pilot series in Poland was already commissioned by IKEA and corresponding assembly instructions had already been released. The bed frame “BERGEN” was eventually delivered to Germany at the end of March 2003.

In this connection, the OLG Düsseldorf confirmed the “national” requirements, as the preparatory acts which were made abroad were clearly targeted to a national use of the design. Due to the fact that the commissioning of the production was targeted to a worldwide distribution and therefore also to the German market, corresponding “national” preparations were acknowledged, too.

This opinion is not shared by the BGH, which cancelled the decision by the OLG Düsseldorf and remitted the matter back to the appeal court in Düsseldorf for the purpose of new proceedings.

By doing so, the BGH confirmed the protectability of the design at issue and determined that the bed frame “MALM”, which is distributed by IKEA, intervenes into the protective scope of the design patent.

The interesting thing about this decision is, however, that the BGH does not share the “domestic relation” of the acts of prior use by IKEA. The BGH confirms that in case of the bed frame “BERGEN”, a final draft and the preparation of construction drawings, the production of prototypes as well as negotiations and serious preliminary talks with potential customers could principally already be sufficient, however, the domestic relation of these prior acts is always decisive. That means that acts for taking up use as well as the use itself must have been made nationally. This was, however, particularly not the case with the bed frame “BERGEN” as there were only acts of prior use outside Germany.

The decision by the BGH is also reasonable as it assumes that a German design patent with respect to its protection is only targeted to infringement actions in Germany and can only be asserted there. Due to the fact that the right of prior use is an exception and therefore a limitation of this protection, it is justified that the scope of the national protective right is curtailed by national acts of prior use, only, something that arises from the systematics of the law alone.

Conclusion:
Rights of prior use towards a German design patent can indeed only be enforced when the prior use acts strictly took place in Germany. That means that it is not relevant that the acts of prior use which were initiated abroad are targeted to Germany, too. Apart from this, the consequences of this decision may also be applied to patents or utility models in the same way.

Federal Court of Justice
decision dated June 29, 2017, file no. IZR9/16
Dipl.-Ing. Josef Bockhorni (Patent Attorney)