.svg)
A registered design for more effective protection against copying
A registered design would be very helpful here because the law registered in the register would be recognized by a court as legally valid and new. As a result, plagiarism would automatically be prohibited upon request as an infringement of law. The legal basis for such a procedure would be Section 42 DesignG in Germany and Art. 19 of the Community Design Ordinance at European level.
Protection without a registered design is possible in individual cases
However, counterfeiting can also be taken against plagiarism without a registered property right. Section 4 No. 3 UWG prohibits the imitation of a competitor's products if the imitator thereby “induces an avoidable misconception of the company origin on the part of the company.”
Case law mentions a total of three criteria that will be met for a prohibition.
- Your product must have a “competitive character”, i.e. fulfill a function of origin.
- Your product must have achieved a certain level of recognition.
- The other product must have taken over the overall impression of the design.
It should be noted, however, that the competitive character is omitted when the relevant market knows a product from the past that already contains the essential characteristics of the product that is now being sold as “novel”.
Market knowledge and research increase the likelihood of an omission succeeding
This requires good coordination between client and lawyer. A court will affirm the claim for injunctive relief if the comparable products presented differ significantly in design. This requires that the court really has an overview of the existing designs. If you fail to do so, the other party can easily convince the court that the market is familiar with forms that are very similar to their own shape and that there is no competitive characteristic.
The research to be carried out starts with the products currently available on the market. In some cases, this will also be sufficient.
Nuances can be decisive
Experience shows that nuances can matter: For example, a competitive characteristic was already recognized when the company's own product was presented on the US market for the first time in the USA and was only then offered in Germany. This was not prevented by the fact that the opposing product came onto the market at the same time as entering the German market. The reason was that placing plagiarism on the market must not weaken the claimant's legal position if the claimant had already presented the product to the public.
On the other hand, the competitive nature is denied if the market only has a usual design and the own product is only provided with a marketing idea.
A clear presentation of your own competitive personality is crucial
The need to be competitive is the most important hurdle on the “own” side. The next step is to check whether the plagiarism has actually adopted the main characteristics of the own product and gives an overall impression that can confuse the plagiarism with one's own product.
In the case of “classic” plagiarism, which copies its own product one-to-one, the facts are clearly met and a court would impose a distribution ban.
Timely action against plagiarism is a must
After plagiarism or imitations have been found, action must be taken as quickly as possible. Case law has developed a one-month period for provisional legal protection (only a few courts are somewhat more generous) between knowledge of the infringement and filing an application with the court. This is where the “famous” interim injunctions originate, which are often the only court decision between the parties. Within this month, the claimant must have already warned the opposing party and the opposing party must have had the opportunity to comment within a reasonable period of time.
It also happens that the other side stops selling just because of the warning. This is often due to the fact that the other party was given incorrect information by their own supplier. However, it is also possible that the company did not conduct proper research before the purchase or the start of operation.
If you find such an imitation, do not hesitate to act, we will be happy to provide you with advice.
