May graphic motifs used by the original manufacturer to associate its cartridges with its printers also be used for third-party printer cartridges?
The plaintiff, EPSON Deutschland GmbH, manufactures and distributes printers and corresponding ink cartridges, on which, since mid-2002, in addition to the item number and the designation of the printers for which they are suitable, it affixes graphic motifs such as teddy bears, rubber ducks, or sunshades, which also allow the assignment of the respective cartridge to the appropriate printer. The graphic motifs are rendered in the color of the ink contained in each cartridge. For cartridges with different colors, the graphic motif appears once for each color on the packaging.
The defendants belong to the Pelikan Group, which also manufactures, among other things, ink products. The defendants' product range also includes cartridges suitable for printers from other manufacturers, including those for EPSON printers. The packaging of their cartridges displays similar graphic motifs to those used by EPSON.
According to the plaintiff, this adoption of the graphic motifs is unfair, particularly due to impermissible exploitation of reputation. The Regional Court upheld her claim for injunctive relief, information, and declaration of liability for damages. The defendants' appeal was only partially successful. The Federal Court of Justice has now overturned the judgments of the lower courts and dismissed the action.
The appellate court had affirmed an unfair impairment of reputation, reasoning that the use of the three graphic motifs by the defendant inevitably weakened their association with the plaintiff's company and was unfair because it exceeded the extent necessarily associated with comparative advertising. However, according to the provision to be applied here (§ 6 para. 2 no. 4 case 2 UWG, Art. 5 lit. d of the Directive on misleading and comparative advertising), comparative advertising is only impermissible if it disparages or denigrates the third-party sign. An impairment of distinctiveness, which the appellate court considered sufficient, is not equivalent to an impairment of reputation.
In addition, the exploitation of reputation, which can also lead to the impermissibility of comparative advertising but had not been examined in detail by the appellate court, had to be considered. In the present case, however – according to the Federal Court of Justice – a prohibition due to exploitation of reputation is not applicable. Within the scope of comparative advertising, the exploitation of reputation is often unavoidable. Whether the advertiser, who refers to a third-party product within the framework of comparative advertising, can be directed to a more gentle form of reference is a question that can only be answered based on a balancing of the interests of the advertiser, the affected trademark owner, and consumers. However, since owners of EPSON printers, even according to the plaintiff's submission, primarily orient themselves by the graphic motifs, the defendants must also be permitted, in the interest of consumers, to refer not only to the order numbers but also – in a modified form – to the graphic motifs for identifying the various printers.
Judgment of the Federal Court of Justice of September 28, 2011 – I ZR 48/10 – Teddy Bear
Regional Court Düsseldorf – Judgment of July 18, 2008 – 38 O 185/07
Higher Regional Court Düsseldorf – Judgment of February 9, 2010 – 20 U 190/08
Source: Press release of the Federal Court of Justice
Goldberg Attorneys at Law 2011
Attorney Michael Ullrich, LL.M. (Information Law)
Specialist Lawyer for Information Technology Law (IT Law)
Email:info@goldberg.de
