On 23 October 2014, the German Federal Supreme Court handed down a decision on the requirements for injunctive reliefs, particularly concerning the presentation of allegedly infringing products at trade fairs (I ZR 133/13). The full reasons for the decision were published recently.

In the decision at hand, the manufacturer of “MIKADO” biscuit sticks sought injunctive relief against another manufacturer of similar shaped biscuits in similar packaging. The defendant had presented its product at the International Sweets and Biscuits Fair in Cologne, a fair that is only open for industry professionals and not for the general public.

According to German IP law, the owner of a trademark or other IP right is entitled to injunctive relief for infringement only if he can show either that an infringement of his rights has already happened in the past (or is currently happening) or that an infringement of his rights is likely to happen in the foreseeable future. In other words, the owner of an IP right has to prove an actual infringement of his rights or a threat of future IP infringement. The same principles generally also apply to the area of unfair competition law.

The plaintiff sought a court order restraining the defendant from promoting, offering, selling or placing its product on the German market, arguing that the defendant’s product constituted an unlawful imitation of his own product and took unfair advantage of the plaintiff’s good reputation under the German law of unfair competition. The Court of Appeals granted the injunction based on the perception of the general public.

The Federal Supreme Court denied the claim, holding that the presentation of a product at a specialized trade fair is not sufficient to constitute a threat that the respective product will be promoted, offered, sold or otherwise placed on the domestic market to consumers in the future. According to the Supreme Court, there is no general rule that the presentation of a product or a product packaging on a trade fair justifies the assumption that the respective product will be placed on the market in the country where the fair is actually located. International trade fairs often only serve to establish business contacts between foreign parties without any relation to the place of the trade fair and without any intention of the exhibiting companies to also offer or sell their products in the respective country of the fair. Thus, in the present case, an intention of the defendant to promote, offer or sell the product to the general public in Germany could not be assumed by the court.

The claim could therefore not be assessed on the basis of the perception of the general public (as had been done by the Court of Appeals). For the assessment of whether there was unfair competition due to the presentation at the trade fair, only the perception of the specialist trade circles was relevant (since the trade fair was not open to the general public). Since trade circles have a more sophisticated level of attention and better knowledge of the market, the claim did not succeed on the basis of the perception of the specialized circles.

Comment

IP rights owners must be aware that a presentation at trade fairs may sometimes not trigger a right to sue for infringement in Germany, if the assessment on the merits differs depending on whether the product is presented to specialized circles or the general public. This will probably be more relevant where the case is based on unfair competition (as in this case) than in cases of e.g. design rights where the relevant test is based on the abstract concept of the “informed user”, a legal concept located between the average consumer and the expert in the field.