The applicants based their motion for an injunction primarily on the protection of their rights under competition law pursuant to Sec. 4 No. 3 a) of the German Unfair Competition Act (UWG), secondly on the three-dimensional trademarks reproduced below, each of which is protected in particular for “fruit juices”,
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and, thirdly, on the corresponding Community designs.
The respondents offer fruit juices with the following product designs in their supermarkets:
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The Higher Regional Court of Hamburg rejected a claim based on competition law as it found no avoidable deception of origin pursuant to Sec. 4 No. 3 a) UWG. It held that, on the one hand the average competitive originality of the applicants’ bottle design was considerably increased, in particular due to the basically unchanged use since 1969. However, even taking into account this high degree of competitive originality of the applicants’ design, the court found that the respondents’ bottle design was sufficiently different from the applicants’ design. In this context, the Higher Regional Court of Hamburg reaffirmed the principle established in the context of the assessment of imitations by the German Federal Court of Justice (BGH) that, in order to determine the degree of similarity between two products, it is not sufficient to single out individual design features. In contrast to this, the overall impression of the respective products must be taken into account. In the case at hand, the court held that the external design of the applicants’ fruit juice bottle is primarily characterized by the interplay between the rather organic-looking lower part, which is rounded and bulbous and has regular indentations or “dimples”, and the straight cylindrical neck of the bottle. This interplay of organic and straight lines is not similar to the design of the respondents’ bottle, since the respondents’ bottle does not appear bulbous and the bottle neck appears more as a narrow continuation of the bottle body. In addition, the design of the respondents’ bottle is also significantly characterized by the trademark “albi” with the stylized crown, which is embedded in a floral design in the shape of a seal. According to the court, the existing major differences in design thus led to a clearly different overall impression of the two bottle designs. The similarities were limited to the usual elements on the market.
The Higher Regional Court of Hamburg also rejected claims under trademark law since there was no likelihood of confusion within the meaning of Section 14 (2) No. 2 German Trademark Act (MarkenG) due to a lack of sufficient similarity between the signs. This already follows from the considerations regarding the absence of a deception of origin within the meaning of Sec. 4 No. 3 a) UWG, which are based on the overall impression of the products, and from the fact that the conflicting signs consist of different elements as to colour and words.
Finally, in the opinion of the Higher Regional Court of Hamburg, there was also no infringement of a Community design. Since the applicants’ bottle design itself has been part of the previously known designs in the relevant area of goods since 1969, all of the applicants’ Community designs only have a narrow scope of protection. Taking into account this density of designs, the fruit juice bottle offered by the respondents creates a completely different overall impression than the applicants’ designs.
With regard to possible trademark infringements, the respondents defended themselves by claiming that the “albi” bottles were not used as a trademark. In fact, trademark use of a product is always problematic in the case of shape marks (as well as colour marks). The Higher Regional Court of Hamburg was able to leave the question of trademark use unanswered since, in its view, the opposing signs were not similar. In the case of use as a trademark, the question arises as to whether the relevant public (here: the average consumer) perceives the shape of the contested product as an indication of origin. The average consumer regularly does not perceive the shape of a product as an indication of origin (in the same way as it may be in regard to word and figurative marks), because the shape of the product is primarily a functional and aesthetic design of the product itself. Even a special design of the product itself is more likely to be attributed to this circumstance than to the intention to indicate the origin of the product (see, inter alia, Ströbele/Hacker/Thiering, German Trademark Act, 13th edition, Sec. 14, recital 163 with further references). Due to a long-standing and intensive use, a product shape can also develop into an indication of origin with the consequence that the relevant public assumes, in regard to the shape, that this product originates from a certain company (such as the “Coca-Cola” bottle), see also the decision “Bounty” by the German Federal Court of Justice (BGH), published e.g. in GRUR 2016, p. 197 et seqq. In view of these strict requirements for the development of a product shape into an indication of origin, the authors are of the opinion that, in the case at hand, there is no trademark use of the challenged “albi” bottles.
