The protection of words on products is usually connected with trademark law. However, there are many words that are used on products that are not simple indication of origin, but also creation itself. The research deals with possibilities and effects of protecting them within industrial design law.
Letzte Änderung: 25.08.22
The first part of research deals with possibility of protection of verbal elements with design right. This was recognized by some courts (KG 24 U 148/11 of 26.08.2013) and in some EUIPO decisions (R 399/2014-3 of 14.09.2015. p. 22). However, some conditions must be fulfilled. First and most important, is the way the consumers perceive the inscription, which is long standing principle. In most cases as OLG Frankfurt (U 31/126 of 06.06.2013. – FTC ) puts out, inscriptions on products are perceived as a reference of the product origin. However, this depends on peculiar facts of each case, and cannot be considered as a principal rule. Also, the decision of LG Düsseldorf (14c O 44/07 of 18.05.2007 – Liebe deine Stadt) shows that designs under design law could only be protected by their visual appearance, so the meaning of the verbal elements cannot be protected with design right. Finally, EUIPO guidelines prohibit the protection of mere verbal elements since they do not represent design according to the legal definition.
The first rule has to be accepted. The perception of consumers must be decisive since it is in accordance with the “market approach”. After all, the car industry, for example, almost always sells their cars adding the name of the firm to the name of the model (VW Golf). The reason for this business practice is most likely the fact that names of the models are not perceived in the public as reference of the origin but as the name of the product or model.
Regarding the rule that mere verbal elements cannot be protected with design right EUIPO BoA (R 1266/2016-3 of 17.02.2017) clarified that this only means that words cannot be protected alone, without any other element of design. It is correct that mere verbal elements, as well as single color, and other single elements of design cannot be protected as such because a design is overall impression of the product. Hence, it would be wrong to protect any singular element.
This however still does not mean that the meaning of the words cannot be protected with design right. Although, it is still debated by scholars if design right protects only visual elements, most of them do not support protection of meaning of verbal elements with design right. In our opinion, the most important factor here has to be the perception of the public. Most of the model names, visually and conceptually must be in harmony with the model itself. If the name was not in accordance with the overall impression of shape and color, it could be rejected by the public. After all, is it possible that informed user that is more attentive than average consumer, cannot read, and average consumer can? Therefore it seems justified to protect the meaning of the verbal elements with design right. However, this would create a new field of overlap between the design right and trademark, and design right and copyright in some cases. Other part of the research is focused on finding the solution for these overlaps.
NikolaMilosavljevic
Prof. Stefan Shokinjov
II.4 Kommerzielle Kommunikation
