The First Civil Senate of the Federal Court of Justice, which is responsible, inter alia, for competition law, has ruled that trading in imitation brand perfumes cannot be prohibited as unfair comparative advertising under Section 6 (2) No. 6 UWG if there is no clear and distinct claim of imitation, but only associations with the originals are aroused.
The defendants offer low-priced perfumes on the internet under the trademark "Creation Lamis", the scent of which is similar to that of certain more expensive brand-name perfumes. Initially, they had used order lists in which the imitations were juxtaposed with a more expensive branded product. However, they stopped using such order lists several years ago. The plaintiff, who sells high-priced perfumes of well-known brands, considers the offer, advertising and distribution of the imitation perfumes to be anti-competitive because they are recognisable as imitations of the originals.
Insofar as the defendants are to be prohibited from trading in the imitations even without using comparison lists, the action was unsuccessful in the lower instances. In response to the plaintiff's appeal, the Federal Supreme Court overturned the appeal judgement and referred the case back to the court of appeal.
The prohibition of Section 6 (2) No. 6 UWG is not directed against imitating an original product. For comparative advertising to be unfair under this provision, it is therefore not sufficient that the original product is merely recognisable due to the presentation and designation of the imitations and that corresponding associations are aroused with the advertising. Rather, a clear imitation claim is prohibited, from which it is clear - without taking into account other circumstances that must first be determined - that the advertiser's product is being advertised precisely as an imitation of the original product.
For the question of whether there is a clear and distinct claim of imitation, the Court of Appeal focused solely on the view of the end consumer and answered the question in the negative in this respect in the dispute. According to the Federal Court of Justice, the underlying findings of the Court of Appeal were free of legal errors. However, the appeal judgement did not contain any findings on the plaintiff's submission that the defendants had also targeted traders with their imitation perfumes who, due to their special knowledge, would have recognised a clear claim of imitation on the basis of the designations and features of the imitation perfumes in the advertising. If the contested advertising is directed at different circles of the public, it is sufficient for unfairness if its requirements are met with regard to one of these circles of the public. The Federal Supreme Court therefore set aside the appeal judgment and referred the case back to the Court of Appeal. The Court of Appeal will also have to examine whether the defendant's advertising to traders constitutes an unreasonable exploitation of the reputation of the plaintiff's trademarks.
Judgment of the Federal Supreme Court of 5 May 2011 - I ZR 157/09 - Creation Lamis
Lower courts:
Berlin Appellate Court, Judgment of 24 July 2009 - 5 U 48/06
Berlin Regional Court, judgement of 25 January 2006 - 97 O 2/05
Source: Press release of the BGH
Goldberg Attorneys at Law 2011
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law (IT law)
E-mail: info@goldberg.de
