A product’s good reputation can be deemed to have been unfairly exploited even if the presentation of the product has been imitated but the word mark has not been infringed. That was the verdict of the Oberlandesgericht (OLG) Frankfurt, the Higher Regional Court of Frankfurt.

We at the commercial law firm GRP Rainer Rechtsanwälte note that if goods or services are offered that are an imitation of a competitor’s products, this constitutes a violation of the Gesetz gegen den unlauteren Wettbewerb (UWG), Germany’s Unfair Competition Act. According to a ruling of the Oberlandesgericht Frankfurt from 28 February 2018, imitating the features of a well-known product may constitute unfair exploitation of the latter even if the word mark on the counterfeit product is distinct from the one featured on the imitated product (Az.: 6 W 14/18).

In the case in question, a company from Malaysia had presented an adhesive at a specialist trade fair, the presentation and colour scheme of which bore a strong resemblance to a well-known product made by a German manufacturer. The only thing distinguishing the products was the different inscriptions on the tubes. The OLG Frankfurt ruled that the German company was entitled to sue for an injunction.

The Court held that the German manufacturer’s product had competitive originality. It went on to explain that this kind of originality presupposes that the product’s specific form or certain characteristics are capable of informing consumers about its commercial origin or special features. The Court noted that it is the overall impression created by the design that matters. These requirements were found to have been met in the case of the adhesive, whose overall impression was said to be influenced mainly by the shape of the tube, the colour scheme and the screw cap. The OLG ruled that these features are familiar to consumers, stating that the characteristic combination of colours and shape give rise to a high degree of brand recognition independent of the word mark. It expanded on this point by noting that it is possible to identify the product even if the writing is not yet legible.

The OLG concluded that the Asian company’s product was an imitation because it featured the imitated product’s defining characteristics such as the shape of the tube and colour scheme in a very similar form. All in all, the Asian company was deemed to be unfairly exploiting the good reputation enjoyed by its German competitor’s product. To this end, the Court held that it is sufficient for consumers to project the original product’s good reputation onto the imitation.

Lawyers who are experienced in the field of competition law can advise on matters pertaining to trademark law as well as in relation to violations of the UWG.

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