German Federal Supreme Court, file no. I ZR 21/11

In a judgment of March 22, 2012 (file no. I ZR 21/11), the German Federal Supreme Court (the Court) held that a toy set - of a sand box with tools - is a possible object of trade dress protection. Since 1996 the plaintiff offered for sale a sand painting box that comprised a rectangular wooden frame, a base made of glass, a packet of sand, a wooden smoother and two wooden rakes. Accessories to this basic set, namely two wooden feet (for the box) and a plastic wiper could also be bought.

Similarly, the defendant offers rectangular wooden sand boxes with wiper and rake accessories, for which reason the plaintiff filed for trade dress infringement against the defendant. The District Court ordered the defendant to give information, to pay damages and to surrender the infringing objects. However, on appeal the Hamburg Appellate Court dismissed the case against which the plaintiff filed a further appeal. The German Federal Supreme Court lifted the Appellate Court’s Judgment with the exception of the dismissal of the surrender claim, and remanded the case to the Appellate Court on the ground that it had erred in its judgment as to whether the plaintiff’s set of a sand plot was a "protectable aggregate of things" pursuant to section 4 Nr. 9(a) of the German Act Against Unfair Competition. The German Federal Supreme Court held that, because of the concrete form and purpose of the single parts, it was clear to the consumers that the objects were all part of a common concept and would work together functionally. It further stated that wrongly, the Appellate Court had failed to recognise the competitive character of the set owing to the isolated view of the single parts of the set.

Düsseldorf Appellate Court, file no. I-20 U 52/12

In a judgment of July 24, 2012 (file no. I-20 U 52/12), the Düsseldorf Appellate Court decided that the Aldi pudding with a cow-coat design did not infringe the design by Dr. Oetker. For several years Dr. Oetker has offered chocolate vanilla pudding under the designation "Paula" and in a transparent plastic cup. Chocolate and vanilla elements are arranged in such a way that they should give the impression of a cow-coat to the consumer and a cow is displayed on the lid of the pudding pot. The spot design is protected as a registered Community design for Dr. Oetker. Aldi offers a similarly designed pudding with the name "Flecki" which also shows, among others, a cow on the packaging. Dr. Oetker claimed that its rights of its Community design were infringed and accused Aldi of an anti-competitive behaviour by way of imitation (Section 4 Nr. 9 German Act Against Unfair Competition). The application for the preliminary injunction was neither successful before the Düsseldorf District Court nor before the Appellate Court. Both courts denied the infringement of the design as well as unfair imitation by the distribution of the pudding "Flecki". The courts found that the design had only a normal scope of protection considering the previous art in the range of multi-coloured pudding brands. The important point was the clear difference in the top view on the pudding (after removing the sealed foil of the pot). Claims arising from competitive imitation failed as Aldi had excluded the risk of confusion as to origin, largely by obvious differences in the overall appearance. Not only were the spots different in form but the design of the packaging, particularly the way in which the cows in the design were presented, were significantly different.

Hamburg Appellate Court, file no. 5 U 49/10

With its judgment of August 22, 2012 (file no. 5 U 49/10), the Hamburg Appellate Court gave its opinion on the coexistence of design protection and trade dress protection. Both the plaintiff as well as the defendant offer elastic training sticks.

The stick offered by the plaintiff corresponds to a registered Community design owned by the plaintiff. The defendant’s training stick is identical with regard to the colour (red stick, black grip and end parts), and differs in form only with regard to the grip. At the time the design was registered (in 2003), a third party’s stick that was identical with regard to the form of the stick offered by the plaintiff, was already in existence. In both instances the claims were rejected. A claim resulting from Article 19 (1) of the Community Design Regulation (CDR) was denied as the plaintiff’s design had only a very limited scope of protection according to Article 10 (1) CDR. The scope of protection is restricted the less the design differs from the prior art. Therefore, the design did not have any protection for the form of the stick as an identically shaped stick already existed at the time of the filing. Due to the narrow scope of protection of the plaintiff’s design the differences in the form of the grip - despite the same form and colour of the sticks otherwise - were able to lead to a different overall impression. Trade dress protection - pursuant to Sections 3, 4 Nr. 9 of the German Act Against Unfair Competition - was generally possible in tandem with the special protection provided by the CDR (Article 96 CDR). In the case at hand however, the protection had to be denied as otherwise the assessment as to protection under the CDR would be contradicted. The Hamburg Appellate Court allowed a further appeal to the German Federal Supreme Court to obtain clarification of the general relationship and interaction between the trade dress protection and the special protection afforded by the CDR.