In its first decision ever on Community designs the German Supreme Court (“Bundesgerichtshof”) was concerned with the question whether an unregistered Community design (UCD) is created by using a design in trade in the territory of the European Community after it has been first disclosed in China (9 October 2008).

The plaintiff before the Court claimed a UCD on the ground that they created a new design for a biscuit press and sold it in the UK shortly after the design was registered and published by the Chinese Patent Office.

Article 11 of the Community Design Regulation (CDR) stipulates that a design which meets the requirements for protection (i.e. novelty and individual character) shall be protected by a UCD for a period of three years as from the date on which the design was first made available to the public within the Community. Article 110a CDR adds that a design which has not been made public within the territory of the Community shall not enjoy protection as a UCD. And Article 5 and 7 CDR rule that the requirements for protection are not met where an identical design has become known within the Community before said date of the UCD.

The Court found that by trading the biscuit press in the UK the plaintiff had made the design available to the public within the Community in the meaning of Article 11 and 110a CDR. However, protection of the design by a UCD must be denied, nevertheless, because the earlier disclosure of the design by the Chinese Patent Office destroyed the novelty of the design according to Article 5 and 7 CDR.

The decision of the German Supreme Court confirms that a design is barred for ever from protection by a UCD where it has been disclosed first outside the territory of the European Community.