You cannot only protect a design using the German Act on Design Patents. In Germany the Act against Unfair Competition also grants protection against imitations to the manufacturer of a product, even if they have not registered a protection right, as long as the imitated product has competitive originality. Competitive originality requires the concrete form (design or specific features) of a product to show the commercial origin or the specific characteristics of a product. These characteristics can also be technical, as long as these are freely interchangeable. Where a product has competitive originality, it is protected against imitation if the target public is deceived about the origin of the imitated product or if the reputation of the original is exploited or damaged. The Federal Court of Justice has for decades outlined in case law the particulars of this protection provided by competition law. However, in two current judgements the Federal Court of Justice now restricted the scope of this protection (Judgement of 17/07/2013 – I ZR 21/12 – Shopping trolley III; judgement of 24/01/2013 – I ZR 78/11 – Shelving system).

Facts

These two actions were brought by the world’s largest producer of shopping trolleys and a manufacturer of shelving systems sold to German supermarkets for more than thirty years. Both proceedings were attacks on nearly identical imitations of their products, the imitations being compatible with the respective originals. The shelving system could also be used to supplement the system of the original manufacturer.

Court decisions

Although the Federal Court of Justice proceeded from competitive originality with regard to both original products and classified the attacked products as identical imitations, it did not automatically regard the sale of the imitations as an infringement. The court generally restricts the protection against imitations if the buyers, due to replacement or extension demands, would also be interested in the external design of compatible rival products. In principle the imitators then have an interest worthy of protection, namely to satisfy an existing demand for replacement or extension by means of elements that are compatible with the product line of the original manufacturer, which could also comprise authorisation to use a similar design if this is important for the buyers. With regard to the shelves, the manufacturer of the imitation successfully claimed that supplementary products are only accepted by the trade if they look identical.

However, the Federal Court of Justice held that this is limited to cases where no confusion as to the origin of such products may arise among buyers. Here, the manufacturers of the imitations are obliged to exclude deception of origin by providing the relevant information. Similarly, the imitation may not be of such bad quality that the reputation of the original products is affected. Finally it is important to ascertain whether offering of the products due to replacement and extension demands is only pleaded because the imitator actually wants to slip into the role of the initial supplier. To clarify these issues, the Federal Court of Justice remitted both proceedings to the Higher Regional Court.

Conclusion

With these two new decisions, the Federal Court of Justice has significantly restricted the design protection in terms of the Act against Unfair Competition. Products that are clearly designed to supplement or expand a specific original system and therefore have to be compatible are privileged to a certain degree. Original manufacturers will not welcome this new turn, while new opportunities may open up in downstream markets.