Werbe- und Designbranche

Advertising and Design industry

Henry Alves Branche EN

Advertising and Design industry

Below you find alle the informaton about design law, trademark law, copyright law and competition law for advertising and design industry.

Design law for advertising and design agencies

Design law, which was formerly known as design patent law is incorporated in German law under the German Federal Design Act [Designgesetz, formerly Geschmacksmustergesetz] is an independent area of law next to copyright law. It offers protection to the products of graphic-, fashion- and other designers.

A registered design constitutes an industrial property right which awards its owner the exclusive right of exploitation regarding a certain aesthetic appearance. Copyright law often does not offer protection to designs, because the threshold regarding the necessary degree of originality [Schöpfungshöhe] for a work to be protectable under the Copyright Act [Urheberrechtsgesetz] is not reached. Design law, however, provides protection independent of the aforementioned threshold, the only requirement being that the design is new and of original character, according to Sec. 2 para. 1 of the Design Act.

Sec. 1 para. 1 of the Design Act protects the registered two- or three-dimensional appearance of an entire product or of part of a product.
A design is new if no identical design has been published before the date of registration according to Sec. 2 para. 2 of the Design Act. However, Sec. 6 of the Design Act stipulates a 12-month period of grace.
A design is of original character if the overall impression it makes on an informed user differs from the overall impression a different design makes on this user. The degree of the designer’s freedom while creating the design must however be considered, Sec. 2 para. 3 of the Design Act.

The design must be registered with the German Patent and Trademark Office (PTO) [Deutsches Patent- und Markenamt], which, pursuant to Sec. 16 of the Design Act, only verifies whether the formal requirements for registration are fulfilled. This means that the design is considered a so-called “unverified right”. Where the owner of a design pursues claims based on the design in a law-suit, the opponent cannot argue that the design is unprotected because the registered design lacked the requirements of being new and of original character at the time of registration or the priority date. The opponent can only pursue this argument by bringing an action for annulment before a court or by filing for annulment with the PTO. Protection under the Design Act begins at the time of registration. The period of protection is 25 years, starting with the date
of registration, Sec. 27 of the Design Act.

However, if the maintenance fee, which is charged as of the sixth year of protection for a period of five years respectively, remains unpaid, protection expires earlier, Sec. 28 of the Design Act.

Council Regulation (EC) No. 6/2002 of 12 December 2001 introduced the Community design.

In addition to the Design Act, the Regulation provides protection to non-registered Community designs. These non-registered designs are protected from copying for three years, whereby protection begins as soon as the design becomes publicly available in the EU (Art. 11 para. 2 of Council Regulation (EC) No. 6/2002 treats certain types of public availability outside the EU equally to public availability inside the EU).

Trademark law for advertising and design agencies

Trademark law is a sensitive issue for advertising and design agencies. One of the reasons that make trademark law so important in this field is that advertising and design agencies are liable for damages caused by trademark infringements if these are caused by them while fulfilling their contractual obligations. We therefore recommend that the first action to be taken upon reception of a new order – especially when it comes to creating logos and slogans – be to assess whether the infringement of third party rights poses a potential risk.

If you are already facing claims for trademark infringements we will develop a defense strategy with you and represent you in extrajudicial and pre-trial negotiations as well as in court.

Furthermore, it may be useful to take on the process of trademark registration for your clients, thus broadening your service portfolio. We are pleased to offer you our consultation services in this process.

If you are seeking to register a trademark for your products and/or services we will – in close cooperation with you – create a list of the goods and/or services relevant for your trademark, find out whether your desired trademark can be protected and assess potential conflicts with already existing trademarks. We will register your trademark with the German Patent and Trademark Office (DPMA) as well as the European Union Intellectual Property Office (EUIPO) and, if necessary, extend protection of your trademark to selected countries throughout the world by undergoing international registration procedure according to the World Intellecutal Property Organization (WIPO).

After your trademark has been successfully registered we will survey the market in order to notice and react to infringements more quickly. In case of such infringements, we will enforce your claims – whether outside of court, by issuing cease and desist warnings, or in court, by filing injunctions and law suits.

Copyright law for advertising and design agencies

Advertisement agencies are often faced with the question of how to protect their ideas and creative products. Normally, the advertisement agency will, under an according contractual provision, transfer the exploitation rights regarding the specific concept to the client for a limited or unlimited amount of time.

However, ideas are often taken by clients without the agency’s prior approval. It may also happen that the exploitation rights granted to the client have expired, but the client still continues to use the idea without compensating the advertisement agency.

A very specific and regularly occurring situation is that the agency designs concepts and ideas for a client, which are then presented to this client, e.g. in the process of pitching, yet the client chooses to engage a different advertisement agency with the implementation of the ideas and concepts. It also regularly happens that clients themselves decide not to engage the pitching agency, but rather implement the developed ideas and concepts themselves.

The first question to be assessed in such cases is whether the idea/concept constitutes a protected work under copyright law provisions. This requires that the specific work reaches the threshold regarding the necessary degree of originality [Schöpfungshöhe] to be protectable under the Copyright Act [Urheberrechtsgesetz]. In most cases, the idea itself will not be able to fulfil these requirements and the necessary threshold would only be reached after implementation.

The second question that needs to be examined in these cases is whether the specific work has been infringed. This is usually the case, where the idea developed by the agency and the actual implementation have significant common features which are apparent to an observer.

Generally copyright law is only helpful where the developed concepts are protected und copyright law provisions and these concepts are assumed almost identically.

However, this does not necessarily mean that you are unprotected in case of such a “concept-theft”. One possibility of protecting yourself could be to agree on an according contractual obligation with the client. Such agreements can be made e.g. in the agency contract or in an individual contract. Such an agreement could contain the client’s obligation to treat the drafts, designs and concepts received during the negotiations as confidential and to not disclose them to third parties, until the payment of compensation. If these ideas and concepts are still used or disclosed, the agency can additionally make claims under competition law based on the unauthorised exploitation of templates.

In the area of “concept- and idea-design” copyright law also plays a major role for employment contracts, as only the person who actually created the work is regarded as its author. If case of doubt, the law regards only the specific employee who developed and implemented these concepts and ideas as the author. It is therefore necessary for this employee to transfer or grant the exploitation rights to the employer. Where this transfer or grant is not performed, the employer is subject to significant risks, as, if doubts arise, it is the employer who carries the burden of proof regarding the ownership of the claimed rights.

We are pleased to offer you our consultation regarding the aforementioned issues and to enforce your rights. Get in touch with us by telephone or in writing in order to make an appointment for consultation.

Competition law for advertising and design agencies

For advertising and design agencies competition law is a sensitive issue, which should not be underestimated. The campaigns and advertising statements you design for your clients must comply with the rules of competition law. Legal boundaries are easily infringed, especially in connection with the process of distinction from direct competitors. Also, the line between such advertising statements that legally animate consumers to purchase and such statements that are misleading – and therefore illegal – is often blurred.
Advertising agencies per se are only affected indirectly by competion law. Claims that could potentially be brought forward by competitors, competition- or consumer-associations would be directed towards your clients. However, a client who has been succesfully sued because of advertisements recommended by you is unlikely to return. In the worst case, he may even be inclined, in turn, to sue you – and the damages brought forward by a client who has been prohibited from advertising prior to the release of an important product or the beginning of an important fair can by far exceed the costs of the law suit.
NIMROD will support you in ensuring that advertising campaigns and statements offered by you are always legally valid, will consult you when your client’s requests seem legally questionable and represent you, in case a legal dispute has already arisen.