How the new EU Design Regulation can kill your infringement claim

[Marcel Pemsel]

How the new EU Design Regulation can kill your infringement claim

Marcel Pemsel Friday, November 28, 2025 - designs, EU design, German Supreme Court, key housing, Marcel Pemsel, repair clause

In a recent decision (case I ZR 116/24), the German Supreme Court (‘GSC’) grappled with the notorious repair clause not once but twice due to the EU’s design law reform that came into force (for the most part) on 1 May 2025. The legislator did not only move the repair clause from Art. 110 Community Design Regulation (‘CDR’) to Art. 20a EU Design Regulation (‘EUDR’) but also narrowed its scope of application. What sounds good for design owners backfired for Volkswagen in the case discussed below.

Background

Volkswagen owns registered EU design (‘REUD’) no. 001342174-0001 for ‘locking and closing devices’ containing inter alia the following views:

W + S Autoteile GmbH (‘W+S’) sold the following car key housing, which Volkswagen considered to infringe its REUD.

Volkswagen sued W+S and was successful at first instance. W+S appealed to the Higher Regional Court of Düsseldorf and filed a counterclaim for a declaration of invalidity of Volkswagen’s REUD. W+S also relied on the repair clause in Art. 110(1) CDR. The appeal court dismissed the appeal and the counterclaim. W+S appealed to the German Supreme Court only with respect to the question of REUD infringement and accepted the dismissal of its counterclaim.

The German Supreme Court’s decision

The judges upheld the appeal in part and dismissed Volkswagen’s claim for injunctive relief but granted claims for damages and disclosure of information up until 30 April 2025.

The Court confirmed that the contested key housing produced the same overall impression as Volkswagen’s REUD. Therefore, the decisive question was whether W+S could rely on the repair clause and, more importantly, which one? Art. 110 CDR or Art. 20a EUDR?

Under German law, an injunction may only be issued if the contested act was infringing at the time it was committed and also at the point in time of the judgment. Since the alleged infringement was committed prior to the new EUDR coming into force on 1 May 2025, the GSC assessed whether W+S’ key housing infringed Volkswagen’s design right under the old and the new law.

Part 1: The old repair clause conundrum (Art. 110(1) CDR)

By reference to the CJEU’s Acacia decision, the judges found that the lower court was wrong to deny that the key housing was a component part of the complex product ‘car key’. The key housing was deemed to be a complex product because it consisted of several parts.

The Court also confirmed that the key housing was not a component part of the complex product ‘car’. Putting the key in the car’s keyhole does not constitute ‘assembly’ in the meaning of Art. 3(c) CDR. Further, modern cars do not have key holes anymore to start the engine.

On the conditions of the repair clause:

1. The judges found that the key housing was meant for repair. The fact that consumers might change the key housing for aesthetic reasons was not sufficient to render the repair clause inapplicable. The repair clause is only inapplicable if the design can only be used for aesthetic but not for repair purposes.

2. The Court also held that W+S’ key housing restored the original appearance of the original car key because it was identical to the original.

The judges deemed irrelevant that the key housing made up the entire complex product. The repair clause also applies where the entire product design is copied.

3. Nevertheless, the defendant failed to meet the strict information obligations required by the CJEU. Specifically, they did not clearly and visibly inform consumers that the product was a non-original replacement part intended exclusively for repair and about the commercial origin.

Consequently, W+S infringed Volkswagen’s design rights under the old law.

Part 2: The new repair clause and the disappearance of claims (Art. 20a EUDR)

Art. 20a EUDR has a significantly reduced scope vis-à-vis Art. 110 CDR. Unlike the old repair clause, it requires a form-dependent design. The judges found that the component part ‘key housing’ is not dependent on the form of the complex product ‘car key’ because it can be designed in other ways (of course, taking technical and practical restrictions into account).

The Court also had doubts about whether W+S fulfilled its obligations to inform consumers according to Art. 20a(2) EUDR. The judges considered that, in online offers, mandatory information must be given online. W+S did not provide such information online.

Despite the conditions of the repair clause not being met, the judges denied an infringement. Besides an infringing act, German courts require establishing a risk of a repeated infringement. An actual infringement leads to a presumption of a risk of repeated infringement, which can be rebutted in exceptional circumstances only. The judges accepted such circumstances:

While the sale of the key housing could have been lawful under the old repair clause, it is clearly unlawful under the new one. Even though W+S did not comply with the information obligations stipulated by the CJEU and thereby infringed Volkswagen’s design rights, it cannot be presumed that W+S would ignore the new law and continue the sale of the key housing, which is clearly infringing under the new law.

For these reasons, the judges dismissed the claim for injunctive relief but granted claims for damages and disclosure of information until 30 April 2025 (the day before the new EUDR entered into force).

The judges also dismissed Volkswagen’s claim for destruction of the key housings. They considered it disproportionate to destroy goods merely because W+S did not comply with the information obligations stipulated by the CJEU. The fact that the sale under the new repair clause would be infringing did not play a role.

Comment

This decision is a stark reminder of the complexities inherent in transitional and procedural law. One of the question the decision raises is whether the German Supreme Court’s requirement of a risk of repeated infringement is in line with Art. 89(1) EUDR (and the comparable Art. 130(1) EUTMR). The Court argues that the change of design law constitutes ‘special reasons’ in the meaning of the aforementioned provisions. However, the sale of the key housing is unlawful under the old and new law, so: What are the special reasons exactly? The mere assumption that W+S would be aware of the changed law and not infringe it? If they intend to comply anyway, why not safeguard it with an injunction and not require Volkswagen to sue again if the Court’s presumption turns out to be wrong? Effective legal protection looks different to me.