The judicial practice of the German Appeal Courts and the Federal Supreme Court has been highly differentiated for decades on the individual preconditions for protection against imitation under competition law. In most cases of dishonest imitation, this judicial practice allows a generally reliable assessment of the prospects of success.
2.1 No need for market recognition of the original manufacturer
First of all, protection against imitation by Unfair Competition Law on the grounds of an avoidable deception as to origin does not according to judicial practice require that the public knows the manufacturer of the product by name. Instead, it is sufficient if it knows that the product has been put into circulation by a specific manufacturer, whoever he may be. As a rule, judicial practice upholds the existence of such a belief on the part of the public if the product is individual and is clearly distinguished from other similar products.
2.2 Imitator‘s knowledge of the original
However, a positive precondition is that the contested product is an imitation and that the manufacturer was aware of the original as his model when he manufactured the contested product. According to judicial practice, however, this is to be assumed if the contested product came onto the market later than the original product.
2.3 Individual character of the original
A further essential precondition for Protection against imitation by Unfair Competition Law is that the product is individual and is obviously distinguishable from comparable products. For this it is necessary (and as a rule sufficient) to present an overview, at least in examples, of rival products on the market. It is sufficient if the product differs from other comparable products on the German market; any individuality at international level is not necessary. There can therefore also be protection against imitation in Germany if the product does not constitute anything particular on foreign markets.
Nor is it necessary for the design features of the product to be new. A product is also regarded as individual and can therefore claim protection against imitation by Unfair Competition Law if its individual design features are known and are not new. It is sufficient for competition law protection if the combination of the design features of the product is new. The combination of known design features to create a new product can grant the latter competitive individuality if the combination of these design features was not previously known on the market.
It is also worth noting that individuality can result from design features that are necessary for technical purposes. Technically necessary design features or their combination can give a product individuality and establish protection against imitations under competition law. Only design features that are absolutely necessary and cannot be replaced by other equivalent design possibilities must be ignored and do not establish protection against imitation by Unfair Competition Law.
2.4 Notoriety of the original product
A further precondition is a certain minimum notoriety of the product on the German market. For this it is sufficient if the product is marketed in not entirely insignificant quantities. It may also be sufficient to exhibit the product regularly and over a longer period of time at trade fairs with a German public, or to advertise it in other advertising media that reach a not insignificant percentage of purchasers on the German market.
There is no requirement that the product must have acquired market recognition or even less that it has become famous. However, according to establish judicial practice, an increased notoriety means that the scope of protection of the product is extended and can also apply against somewhat more remote imitations.
2.5 Similarity between original and imitation
A further precondition for protection of a product against imitation by Unfair Competition Law is that the imitation must have a sufficient degree of similarity to the original. The decisive factor is whether the overall impression created by the imitation corresponds to the overall im-pression of the original product. Correspondences in individual features that are not decisive for the overall impression of the product are not sufficient. Conversely, differences in individual features of the execution of the product are of no significance and do not prevent protection against imitation if these features fade into the background in the overall impression. There is sufficient similarity for protection against imitation if the imitation corresponds with the original in the combination of decisive design features and otherwise is devoid of any additional characteristic features.
Differences in details of execution that are only identifiable in a comparative examination of the imitation and the original are as a rule no obstacle to imitation protection. According to judicial practice, the assessment of similarity is to be based on the impression of the original that the purchaser recalls when he encounters the imitation and typically does not have the opportunity to compare the original and imitation directly.
2.6 Protection even if the trademark is changed
Merely omitting the trademark of the original product in the imitation does not, as a matter of principle, exclude protection against imitation.
Nor, however, does the application of a different trademark to the imitation overcome the protection of the original in many cases. In any event, this is the case if the different trademark is not permanently and inseparably affixed to the imitation. The different trademark does not circumvent the protection of the original even if the different trademark is not easily identifiable or if the public in the market sector concerned generally makes its decisions on the basis of features other than the trademark.
However, even if the trademark is applied permanently and visibly to the imitation, and even if the purchasers also make their decisions on the basis of the trademark in the market sector in question, the original may still enjoy protection against such imitation. This applies in particular if it is not unusual in the trade sector in question to market products in the same or a modified form under a second trademark.
2.7 Avoidability of the deception as to origin
A further precondition for protection against imitation is that the imitator could reasonably be expected to use a different design. In this respect, it is as a rule sufficient if the manufacturer presents an overview of the market (in extracts) to show the variety of designs in the product category in question.