The Munich Higher Regional Court held in its judgment of 1 June 2017 (6 U 3973/16, published in GRUR-RR 2017, page 444 et seq.) that advertising using the claim ‘patent pending’ can be misunderstood in Germany and therefore violate competition law, even if the advertiser has filed a patent application.
Under section 3(1) of the German Act against Unfair Competition (“Gesetz gegen den unlauteren Wettbewerb”, abbr.: “UWG”) in connection with section 5(1) UWG, misleading commercial practices are unlawful. If an advertising claim can be understood in various different ways, it is already misleading if a considerable part of the target audience understands the advertising claim in a way incompatible with the actual circumstances. This is especially important when foreign-language statements are used for advertising purposes.
In the English-speaking world, the claim ‘patent pending’ is used to indicate that a patent has been applied for but not yet granted for an advertised product or parts of it.
‘Patent pending’ is now commonly used in Germany, too. However, the term ‘pending’ is not a part of the basic vocabulary of the English language and can be translated into German in two different ways. One is ‘ausstehend’ (‘outstanding’) which emphasises that an event has not yet occurred. The other is ‘anhängig’ (‘pending, sub judice’) which emphasises that an event has already taken place.
In the case before the Munich Higher Regional Court, the Defendant advertised an interdental cleaning product with the claim ‘patent pending’. The Defendant had indeed filed a patent application for an interdental cleaner.
But the Munich Higher Regional Court ruled that the Defendant’s use of ‘patent pending’ was misleading and therefore in contravention of competition law. This is because the Court found that a considerable part of the target audience understands the words ‘patent pending’ to mean that a patent has not only been applied for but already granted. The English term ‘pending’ is not understood as a restriction by said part of the audience. They therefore assume that the advertised product or part of it is already protected by a patent. But since the Defendant had only filed a patent application, the words ‘patent pending’ led to a mistaken impression. This mistaken impression is also relevant to competition, the Court held, since the assumption that patent protection is in place is in principle capable of influencing the purchase decisions of the target audience.
Even a mistranslation of foreign-language statements can lead to liability under competition law in Germany if a considerable part of the target audience in Germany wrongly translates the statement. Although ‘patent pending’ indicates to native speakers of English that a patent application is in process, this does not keep the target audience in Germany from understanding it differently. Whether a foreign-language statement is understood incorrectly by a considerable part of the target audience is determined by the court if it belongs to that audience itself. Thus the court’s estimate of the foreign-language competence of German consumers can determine liability under competition law.
Back in 1996, the Dusseldorf Higher Regional Court ruled that a considerable part of German consumers did not understand the term ‘pending’ as part of the phrase ‘patent pending’. The judgment of the Munich Higher Regional Court makes it clear that these English words are not always understood correctly in 2017 either. The judgment thus serves as an important reminder that overestimating the foreign-language competence of German consumers constitutes a tangible liability risk under competition law.