In a dispute over the design rights to a bed, the design office e15 from Frankfurt won a partial victory against the Swedish furniture group Ikea on Thursday: The Federal Court of Justice (BGH) in Karlsruhe ordered Ikea to present new arguments – otherwise sales in Germany are threatened with the end. The e15 designer Philipp Mainzer claims that with “Malm” Ikea infringes property rights on his creation, the solid wood bed “Mo”.
E15 had registered design rights for its competitor’s bed frame in the course of the process and also presented the bed in January 2002. Ikea, on the other hand, argues that it developed its “Malm” bed in parallel, but without any knowledge of “Mo”. In a certain way, the law saw such cases coming: Design protection provides special regulations for parallel developments, so that those who want to register their design just a little too late are not legally locked out by the other party and their work was therefore in vain.
… and this is “Mo”.
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Image: dpa
However, the hurdles are high: The third party must have developed an “identical pattern” before the filing date, and must do so “independently” – that is, roughly speaking, without copying the other product. In addition, “serious preparations” for distribution must already have been made. These are roughly consistent building instructions and drawings, explains Constantin Rehaag, a partner in the Dentons law firm.
The design office has often complained about imitations
If Ikea could provide such proof, then “there would be both beds and e15 would have to live with them,” says Rehaag. But the judges in Karlsruhe have now made this already complex task even more difficult: although Ikea had submitted building instructions, among other things, it was probably unable to show that these preparations had also taken place on German soil. The Federal Court of Justice has now introduced just such a territorial reference. They therefore referred the dispute back to the lower court (Az.: I ZR 9/16).
In this way, the court makes it more difficult for parallel designers who register too late to defend themselves against registered designs. Nevertheless, the BGH has increased legal certainty for all parties involved, comments Rehaag. “The judgment could possibly lead to corporations distributing parts of the preparatory actions to important sales markets,” speculates the lawyer. It is then questionable whether such parts are sufficient.
The legal dispute with Ikea is the most prominent, but not the only one that Mainzer has fought out. For a long time he has complained about imitations, especially with the “Backenzahn”, a stool made of four solid pieces of wood and with characteristically slanted legs. Twenty years ago, Mainzer designed the iconic stool, which has been copied many times. At the Cologne Furniture Fair last year, e15 went on the offensive and displayed a dozen counterfeits of the “Backenzahn” at its stand, against which the company had successfully taken action. Visitors were asked to find out the original for themselves. While e15 was able to obtain an injunction against the Max Bahr hardware store chain in the matter of “Backenzahn”, two years ago there was a defeat against the Dänisches Bettenlager before the Düsseldorf Higher Regional Court.
A spokeswoman for the design office, which has its furniture manufactured by suppliers, reports that many cases never even go to court. An out-of-court settlement is often successful. “First and foremost, it is important to us that there is an omission,” says the spokeswoman. Legal steps are currently being examined in this matter for further Ikea furniture. Counterfeits are a big issue in the industry. “Disputes about design protection are the order of the day,” reports Ursula Geismann from the Association of the German Furniture Industry. Above all, furniture classics by designers such as Charles Eames, Marcel Breuer and Arne Jacobsen are copied. The Internet fueled the business with imitations of famous designer furniture.