Germany. Competitors are protected from imitation under Section 4 No. 3 UWG. There it is regulated that a person acts unfairly if he offers goods or services that are an imitation of the goods/services of his competitor, for example, if he thereby causes avoidable deception of the customers about the commercial origin. But what if the product packaging already makes it clear that it is another manufacturer? Is a deception of origin and thus also an imitation in this sense already excluded? This was (among other things) the subject of the decision of the Federal Supreme Court (BGH) of 26.01.2023 (Ref.: I ZR 15/22).
The plaintiff, which markets butter and blended spreads under the trademark “Kerrygold”, took legal action against another Irish-based company which also markets the same product category under the trademark “Dairygold”. The Dairygold packaging constitutes anti-competitive imitations, according to the plaintiff. For illustration purposes, the following table. The golden or silver basic colour of the packaging is striking. The grazing cows with the pasture landscape can also be found everywhere. The Dairygold packs also say “From County Kerry”. A golden round seal was positioned on the right by both parties.
| Kerrygold | Dairygold |
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Offering an imitation can be anti-competitive according to Sec. 4 No. 3 UWG, if the imitated product has a competitive character and special circumstances – such as an avoidable deception about the commercial origin (lit. a) or an unreasonable exploitation or impairment of the reputation of the imitated product (lit. b) – arise from which the unfairness follows. There is an interaction between the degree of competitive distinctiveness, the manner and intensity of the takeover and the particular competitive circumstances.
First of all, the question was whether the imitated product was protected under unfair competition law at all, so that claims under the Unfair Competition Act (UWG) could be justified. The respective packaging of the plaintiff must therefore have “competitive distinctiveness”. This is the case if the concrete design of the product or certain features are suitable to indicate its commercial origin or its special features to the interested public (established case law; see BGH, judgment of 4 May 2016 – I ZR 58/14). Although the public does not have to know the name of the manufacturer, it must assume on the basis of the design or characteristics of the product that it comes from a particular manufacturer, whatever that manufacturer may be called, or that it has been placed on the market by an undertaking affiliated with that manufacturer. According to the BGH, this also applies to packaged products such as butter and blended spreads. This is because here the external design (the packaging) can indicate the commercial origin of the goods packaged therein. The competitive distinctiveness was described as follows: This packaging for Kerrygold blended spreads was characterised by a gold or silver coloured banner on the left half of the top side, on which the words “From Irish pasture milk”, “Kerrygold” and “extra” were depicted in an identical manner. The background shows a hilly pasture landscape with two grazing cows and a body of water in the upper right-hand corner. In the lower left-hand corner, the seal printed on the butter packaging is shown.
For imitation it was then stated: The defendant’s product packaging also centrally displayed the very similar sounding brand name “Dairygold”, above which – as on the packaging of Kerrygold’s product – an arch-like lettering was also printed. As with the applicant’s product packaging, there was a golden seal in the lower right-hand half. Dairygold thus adopted for its own product packaging precisely those design features which established the distinctive character of Kerrygold’s packaging.
But are the consumers of the products misled about the origin at all? After all, the product and manufacturer names of the opposing products are different and not all design features have been adopted identically. The Federal Supreme Court is of the opinion that this does not rule out a deception of origin from the outset. An indirect deception of origin would at least be conceivable if there was a risk that the public would assume that the Dairygold products were a new series or a secondary brand on Kerrygold’s pages. If – as in this case – the essential design features of the product packaging were also taken over, there could be a deception of origin even if the indication of origin was clear. Ultimately, however, more detailed factual findings must be made from which it is evident that such a deceptive impression is created among consumers.
However, the legal dispute is not yet over. The BGH has referred the case back to the Court of Appeal – for procedural reasons. The plaintiff may be given the opportunity to make new submissions. So “all is not yet well”.