Can the New EU Design Regulation Kill an Infringement Claim Overnight?

The EU design law reform, effective largely from 1 May 2025, was intended to modernise and clarify the long-criticised repair clause. A recent decision of the German Supreme Court (Bundesgerichtshof, BGH) shows, however, that the reform can have surprising and potentially far-reaching consequences for design owners. In case I ZR 116/24, the Court had to apply the repair clause twice — once under the old Community Design Regulation (CDR) and once under the new EU Design Regulation (EUDR). What appeared at first glance to be a strengthening of design protection ultimately backfired, even for Volkswagen.

Volkswagen owns Registered EU Design No. 001342174-0001 for locking and closing devices, which includes various views of a car key. W + S Autoteile GmbH (W+S) sold replacement car key housings that Volkswagen considered to infringe its design. Volkswagen was successful at first instance. On appeal to the Higher Regional Court of Düsseldorf, W+S relied on the repair clause in Art. 110(1) CDR and filed a counterclaim for invalidity. Both the appeal and the counterclaim were dismissed. W+S then appealed to the German Supreme Court, limited to the issue of design infringement.

The BGH largely agreed with the lower courts that the contested key housing created the same overall impression as Volkswagen’s registered design. The decisive issue was therefore not similarity but whether W+S could rely on the repair clause — and, crucially, which version of the repair clause applied. Under German procedural law, an injunction requires that the challenged conduct be unlawful both at the time it was committed and at the time of the judgment. Because the alleged infringement began before the EUDR entered into force on 1 May 2025, the Court assessed the case under both the old and the new law.

With respect to Art. 110(1) CDR, the Court corrected the lower court by holding that a car key is a complex product, as it consists of several components, and that the key housing is therefore a component part of that complex product. Referring to the CJEU’s Acacia judgment, the Court rejected the argument that the key housing was a component part of the car itself. Inserting a key into a car does not constitute “assembly” within the meaning of the CDR, and in any event many modern vehicles no longer use physical keyholes.

The Court further held that the key housing was intended for repair. The possibility that consumers might replace the housing for aesthetic reasons does not exclude the application of the repair clause unless the design can only be used for aesthetic purposes. The replacement housing also restored the original appearance of the car key, as it was identical to the original. The judges emphasised that the repair clause may apply even where the entire product design is copied.

However, W+S failed to comply with the strict information obligations developed by the CJEU. Consumers were not clearly and visibly informed that the key housing was a non-original replacement part intended exclusively for repair, nor were they adequately informed about the commercial origin. As a result, the Court found that W+S had infringed Volkswagen’s design rights under the old law.

The outcome changed once the Court turned to the new repair clause in Art. 20a EUDR. Compared with Art. 110 CDR, the new provision has a much narrower scope, as it applies only to form-dependent component parts. The Court found that a key housing is not form-dependent, since it can be designed in different ways, even if technical and practical constraints must be respected. The Court also expressed doubts as to whether W+S had complied with the information obligations under Art. 20a(2) EUDR, noting in particular that mandatory information for online sales must be provided online, which W+S had failed to do.

Despite these findings, the Court denied Volkswagen’s claim for injunctive relief. Under German law, an injunction requires not only a past infringement but also a risk of repeated infringement. While such a risk is usually presumed once an infringement has been established, it may be rebutted in exceptional circumstances. The Court considered those circumstances to be present here. Although the sale of the key housing infringed Volkswagen’s design rights under the old law due to non-compliance with information obligations, the Court assumed that W+S would comply with the new EUDR going forward, under which the sale of the key housing would clearly be unlawful. On that basis, the Court held that there was no sufficient risk of repeated infringement.

Volkswagen was therefore denied an injunction, but it was granted claims for damages and disclosure of information up to 30 April 2025, the day before the EUDR entered into force. The Court also rejected Volkswagen’s claim for destruction of the infringing goods, finding it disproportionate to destroy products merely because the seller had failed to comply with information obligations.

The decision highlights the practical and conceptual difficulties that arise at the intersection of substantive design law reform and national procedural requirements. It also raises a fundamental question as to whether the German Supreme Court’s approach is compatible with Art. 89(1) EUDR and the parallel provision in EU trade mark law. The Court treated the change in design law as a “special reason” justifying the denial of an injunction. Yet the conduct at issue was unlawful under both the old and the new law. If the assumption that the defendant will comply with the new rules is correct, an injunction would be harmless. If it is wrong, the design owner must start enforcement proceedings all over again. Whether this truly amounts to effective legal protection remains open to debate.