May image motifs that the original manufacturer uses to assign its cartridges to its printers also be used for third-party printer cartridges?
The plaintiff, EPSON Deutschland GmbH, produces and sells printers and matching ink cartridges on which, since mid-2002, it has affixed picture motifs such as teddy bears, bathing ducks or parasols in addition to the article number and the designation of the printers for which they are suitable, which also allow the respective cartridge to be assigned to the matching printer. The picture motifs are in the colour of the ink contained in the cartridge. In the case of cartridges with different colours, the image motif for each colour appears once on the packaging.
The defendants belong to the Pelikan group, which also manufactures ink products, among other things. The defendants' range also includes cartridges suitable for printers of other manufacturers, including those for EPSON printers. The packaging of their cartridges show similar picture motifs to those used by EPSON.
In the plaintiff's view, this adoption of the image motifs is unfair, in particular because of inadmissible exploitation of reputation. The Regional Court granted her claim for injunctive relief, information and a declaration of liability for damages. The defendant's appeal had only limited scope. The Federal Supreme Court has now set aside the judgments of the lower courts and dismissed the action.
The Court of Appeal had affirmed unfair damage to reputation on the grounds that the defendant's use of the three image motifs necessarily weakened their association with the plaintiff's company and was unfair because it went beyond what was necessarily associated with comparative advertising. However, according to the provision to be applied here (Sec. 6 para. 2 No. 4 Case 2 UWG, Art. 5 lit. d of the Misleading and Comparative Advertising Directive), comparative advertising is only unlawful if it disparages or denigrates another's sign. Detriment to distinctive character, which the Court of Appeal considered sufficient, is not equivalent to detriment to reputation.
In addition, an exploitation of reputation had to be considered, which could also lead to the inadmissibility of comparative advertising, but which had not been examined in detail by the court of appeal. In the case in dispute, however - according to the Federal Court of Justice - a prohibition due to exploitation of reputation cannot be considered. In the context of comparative advertising, exploitation of reputation is often unavoidable. Whether the advertiser who refers to another's product in the context of comparative advertising can be referred to a more gentle form of reference is a question that can only be answered on the basis of a weighing of the interests of the advertiser, the trade mark owner concerned and the consumers. However, since, even according to the plaintiff's submission, the owners of EPSON printers are primarily oriented towards the image motifs, the defendants must also be allowed, in the interest of consumers, to refer not only to the order numbers but also - in a modified form - to the image motifs in order to identify the various printers.
Judgment of the BGH of 28 September 2011 - I ZR 48/10 - Teddy bear
Düsseldorf Regional Court - Judgment of 18 July 2008 - 38 O 185/07
OLG Düsseldorf - Judgment of 9 February 2010 - 20 U 190/08
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
