Protection against passing-off

In practice, these rules are still very important, in particular, if there is no registered design right on which claims could be based. Even the possibility of basing claims on a non-registered Community design has not rendered the unfair competition rules against passing-off unnecessary.

On the contrary: in most court cases involving product copying or product piracy, the plaintiffs rely on unfair competition rules at least as a fall-back position or even as the main basis of their claims. One reason is that the non-registered Community design expires three years after the product has first been disclosed in public, while unfair competition claims, at least in Germany, can be asserted as long as the original product has not lost its character or ‘originality’ in the market.

Establishing the character or originality of a product is arguably the main threshold for being awarded a claim for passing-off under German unfair competition law. A product possesses originality if its design or other features are capable of indicating to the relevant public that it originates from a certain manufacturer. This is the acknowledged rule established and confirmed by many decisions of Germany’s Federal Supreme Court.

As always, the main task for the practitioner is not to understand the meaning of this straightforward definition, but to evaluate and establish the relevant facts. In most cases, it is necessary to show that the product in question possesses a distinctive quality in comparison with other relevant products marketed by competitors.

Products with mainly technical features present their own problems in this context. This is the subject matter of the latest decision of the Federal Supreme Court on the passing-off of ‘LIKEaBIKE’, rendered on May 28, 2009. The manufacturer of the well-known LIKEaBIKE children’s bike claimed that a bike distributed by a competitor was a copy of its own well-established bike, under German unfair competition law.

“Establishing the character or originality of a product is arguably the main threshold for being awarded a claim for passing-off under German unfair competition law."

The first reason why this decision is noteworthy is that the originality requirement is explained in more detail than in past decisions on products featuring design and technical features. It is said that the originality depends on the overall impression of the product, which must be determined taking into account all features of the original product: features that may not be a basis for originality and features that may be regarded as original themselves.

Also, those features that may not be constitutive for the originality requirement may still add to the overall impression and so influence the result. The court is not allowed to disregard some features of the original, such as the colour of the rubber grips in the LIKEaBIKE design, when evaluating the overall impression. That is decisive because copying also those (seemingly minor) features of the original may in the future be regarded as a further factor deceiving the public about the origin of the product.

The court also emphasises that technical features regarded as prior art may not be copied, even if they constitute a reasonable solution to the technical problems presented by the product, when there are reasonable alternative solutions that the defendant could have chosen to prevent deceit of the public.

So if these technical features add to the originality of the product in that the relevant public associates with it a certain origin, and these technical features or functions must be regarded as prior art, and the attacked product includes these technical features, the existence of reasonable alternative ways to prevent the public from confusing the products may allow a court to prohibit a product for deceiving the public.

In the LIKEaBIKE case, the Federal Supreme Court reversed the appeal decision of the Cologne Court of Appeal and remanded it back to that court. The appeal court had not sufficiently considered that apart from the main design features, many other features (also technical features) were copied almost identically, and that those other (seemingly minor) features of the original may add to its originality.

Therefore, copying these seemingly minor features was a decisive factor for holding that there is a valid unfair competition claim against the product.

Jens Künzel is a partner at Krieger Mes & Graf v. der Groeben. He can be contacted at: jens.kuenzel@krieger-mes.de