The design of a product can be protected by the German laws against unfair competition even if it was formerly covered by a patent that expired in the meantime. This finding of the German Federal Supreme Court in a recent decision (judgment of December 15, 2016, I ZR 197/15 – Bodenduebel) forms the latest piece in the case law puzzle concerning supplemental product protection by means of the general rules of the German Act Against Unfair Competition (“UWG”).

According to sec. 4 (3) UWG, the distribution of product imitations is illegal if it causes an avoidable deception on the commercial origin, or if it unreasonably exploits or impairs the targeted public’s appreciation for the original product. It goes without saying that a liberal application of this regulation could easily give rise to inconsistencies with a view to the legislature’s normative decisions implemented within the rules on the protection of intellectual property rights. The life span of patents, for example, is limited to twenty years in order to enable free usage of technical inventions after the patentee had sufficient time to reap the fruit of his inventive efforts. Indefinite protection for the patented visual features of the product under sec. 4 (3) UWG could theoretically contradict this objective.

Four many years, German courts have tried to delimitate and harmonize the scope of competition law product protection in order to prevent such undesired legal contradictions. One string of case law developed in this regard concerns cases where the overall impression of the original product is dominated or at least significantly influenced by visual features with a technical function. Roughly speaking, only technically necessary features, i.e. features whose implementation is without alternative for the desired technical effect of a product, have to be disregarded when evaluating the original product’s scope of protection. In contrast, similarities in technically (only) useful features that are not indispensable for the intended technical effect have to be taken into account when comparing the original product and the contested imitation under sec. 4 (3) UWG.

In its judgment of December 15, 2016 (I ZR 197/15 – Bodenduebel), the German Federal Supreme Court now confirmed that the differentiation between technically necessary and technically useful features also applies if the respective features were formerly protected by a patent. According to the court, the application of sec. 4 (3) UWG on previously patented useful technical features does not contradict the objectives of the temporal limitation of patent protection as it requires the determination of additional circumstances that disclose unfairness (e.g. avoidable deception on the commercial origin of the imitations) which is alien to the assessment of patent infringement.

Practical Impact:

The scope of protection under sec. 4 (3) UWG depends, inter alia, on the original product’s visual distance from other designs available on the market as well as on the targeted public’s familiarity with this product. These criteria can be quite pronounced among products which benefited from absolute patent protection for a significant period of time. As long as there exist alternatives to the design of the technically useful patented features, however, this developmental advantage resulting from patent protection does not justify a normative correction or limitation in the application of sec. 4 (3) UWG. Consequently, supplemental protection of the design of formerly patented products under the German laws against unfair competition is easily conceivable.