ICE, ICE.... - the BGH and the citation of a design

Those of our readers that have been travelling by train in Germany may be familiar with the Intercity-Express or ICE high speed trains. The German Federal Supreme Court (Bundesgerichtshof) last week had to decide on a design right case relating to the depiction of an ICE type 3 (see left) train in a marketing brochure. On 7 April 2011 the Bundesgerichtshof held that depictions of designs are not permissible under § 40 (3) of the German Design Act (GeschMG) if they are merely used for advertising purposes (case reference I ZR 56/09). The claimant, Fraunhofer-Gesellschaft, had been seeking a declaratory judgement that German railway company Deutsche Bahn AG had no claims against it for having used photographs of ICE trains in an advertising brochure published by Fraunhofer-Gesellschaft. The relevant provision in the German Design Act § 40 (3) of the German Design Act (GeschMG) relating to the right of citation provides as follows: the rights conferred by a design right can not be exercised in respect of acts of reproduction for the purposes of making citations or for teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that the source is mentioned. By way of background: § 40 (3) GeschMG is shaped according to Article 13 (1)(c) of the Design Directive 98/71/EC and an equivalent provision can also be found in Article 20 (1) (c) of the Design Regulation (EC) 6/2002 as regards to Community Designs.

The Bundesgerichtshof took the view that § 40 (3) GeschMG required that there was a connection between the depicted design and the operations of Fraunhofer-Gesellschaft and that the photographs of the ICE trains that were used in the brochure had served as a quotation for statements made by Fraunhofer-Gesellschaft. Pure marketing however did not meet the requirements of a citation in the sense of § 40 (3) GeschMG. The information provided by the claimant in its brochure referred to the ICE train type 1 but a photograph of an ICE train type 3 was used. Consequently, the Bundesgerichtshof found that the depiction of the ICE train type 3 had only served marketing purposes and could not be seen as a permissible citation that served to illustrate the operations of the claimant.


The court’s press release relating to this case can be found here (in German). The moral of this story according to Merpel is rather more simplistic: use a photo of ICE type 1 when you are writing about ICE type 1. Use a photo of ICE type 3 when writing about ICE type 3, otherwise, do not try to invoke § 40 (3) GeschMG.