Design Protection Under Unfair Competition Law in Germany

Jeremy Phillips, one of the marvelous IPKats, has authored this month's editorial of the Journal of Intellectual Property law & Practice, wherein the German approach to design protection via the law on unfair competition was praised.

Since it is clearly a rare and sensational exception that we Germans are hailed by the English, I tought it is a good idea to briefly talk about this.

Germany's Federal Supreme Court grants complementary protection under unfair competition law using two possible approaches:

1. firstly, the offering of goods or services being imitations of the goods or services of a competitor in such a way that it results in an avoidable deceit on the trade origin of the specific goods and/or services is considered unfair (§4 Nr. 9 a) UWG),
   
2. secondly, the offering of goods or services being imitations of the goods or services of a competitor in such a way that it expoloits or damages the valuation of the imitated goods or services is considered unfair (§4 Nr. 9 b) UWG).
   

A fairly good overview on the requirements to be fulfilled for consumer products can be found in the decision 6 U 157/09 of the Frankfurt Upper District Court. Here are the basics in a nutshell: Both approaches are based on the notion of "wettbewerbliche Eigenart", which could be roughly translated as "Competitive Individual Character" and is slightly different from the "individual character" required for registered designs in that the focus is put to features with the qualify for the identification of a particular trade origin of the goods. Everyday products, for which the relevant public is not used to consider the origin as relevant, do not qualify as products with "competitive individual character". Well- known or "famous" products are considered to have an increased competitive individual character.

For the particular case of design protection, it is required that the indifidual character results from design features (which should not be technically unavoidable). Furhter, the imitation of a product with competitive individual character is considered unfair only if particular circumstances are met, wherein a lower competitive individual character may be compensated by a higher degree of unfairness in the circumstances of the immitation and vice versa.

For the first approach, these particular circumstances result form the avoidable deceit on the trade origin of the goods, for which it is clearly reuqired that the relevant public is used to think about the origin of the products and to draw information of this origin from the design features.


For the second approach, these particular circumstances result form the exploitation of the valuation of the imitated product, which is possible only if the imitated product enjoys a certain appreciation and high profile in the perception of the relevant public, which needs to associate at least some positive properties with the product, resulting in particular from its quality, exclusivity, luxury or prestige value with the product.