The Federal Court of Justice recently clarified in two appeal proceedings that, even if the value of the subject matter of the attorney’s work for design nullity proceedings is to be determined on the basis of equitable discretion (§ 34a(5) 2 Design Act in connection with § 23(3) and § 33(1) Lawyers’ Remuneration Act), the standard subject matter value for such proceedings is to be set at EUR 50,000 if there is a lack of indications for assessing the economic interest of the design holder in maintaining his design (decisions of 28 May 2020, file references: I ZB 25/18 and I ZB 26/18).
The Federal Court of Justice thus contradicts the view repeatedly expressed by the Federal Patent Court and in some literature, according to which the value of the subject-matter of design nullity proceedings under paragraph 34a of the German Design Law must be assessed higher than that of cancellation proceedings under paragraphs 50 and 54 of the German Trade Mark Law. Accordingly, the Federal Patent Court, referring to the fact that a registered design refers to the appearance of a product and thus to the product itself, whereas the main function of a trademark is to indicate the origin of goods and services from a certain company, regularly assumed a doubling of the object value of EUR 50,000 generally assumed in trademark cancellation proceedings.
It is welcomed that the Federal Court of Justice supports the efforts of the Federal Patent Court to establish a standard subject matter value also in design nullity proceedings. At the same time, however, the Federal Supreme Court has made it clear that such an assessment of the standard subject matter value is not as straightforward as doubling the respective value in trademark cancellation proceedings.
It can be assumed that the German Patent and Trademark Office and the Federal Patent Court will in future set a minimum value in dispute of EUR 50,000 in design nullity proceedings, which, in view of the sometimes significantly lower values in such proceedings to date, would lead to an increase of the cost risk for the parties involved.
