Press release of February 2, 2012
In a decision which has just become final, the Dusseldorf Appeal Court granted protection against distributing a replica of a rear light for trucks (Case No I-20 U 68/10). The matter related to a quasi-identical imitation of a rear light for trucks which Vignal Systems SA, a French-based automotive supply company and one of the internationally leading manufacturers of signal lamps for trucks and trailers, had originally developed at the end of the nineties and since then distributed also in Germany. The original rear light was not protected by a design or patent in Germany. The Dusseldorf District Court and Dusseldorf Appeal Court, however, both found the reproduction to be an unlawful imitation under German unfair competition law.
The defendant, Nicolaos Dasteridis SA, argued that the accused rear light was a spare part, the form and appearance of which were predetermined by the original, and that the allegation of it being an unlawful imitation was invalidated by a different sign of the manufacturer attached onto the light.
Earlier, the Hamburg District Court had held that the rear light of Nicolaos Dasteridis SA did not infringe the rights of Vignal Systems SA. Also earlier, a claim by Vignal Systems SA for a preliminary injunction prohibiting the accused rear light had been rejected by the Hamburg Appeal Court (in these proceedings, the Vignal SA had not yet been represented by BARDEHLE PAGENBERG).
In spite of these negative decisions, the Dusseldorf Appeal Court granted protection against the challenged rear light in main proceedings initiated by BARDEHLE PAGENBERG on behalf of Vignal Systems SA. The Court found that the outer appearance of the original rear light showed competitive individuality so that consumers would perceive the product as stemming from a specific company. Distribution of an identical reproduction, thus, would lead to a likelihood of confusion as to origin. Such likelihood would not be excluded by using the – insufficiently visible – sign of Nicolaos Dasteridis SA on the accused rear light.
The defendant’s appeal against refusal of leave to appeal was dismissed by the German Federal Supreme Court on December 21, 2011 (Case No I ZR 25/11), thus rendering the decision of the Dusseldorf Appeal Court final. This established German case law shows: Protection may be granted against imitation not only if a product is protected by patent, design or copyright law, but also if its design factually distinguishes it from the field of competing products.
Representatives Vignal Systems SA:
BARDEHLE PAGENBERG (Munich):
Dr. Stefan Abel (Attorney-at-Law, Partner),
Pascal Böhner (Attorney-at-Law, Certified IP Lawyer)
Representatives Nicolaos Dasteridis SA:
Von Huebner (Munich): Dominik von Huebner (Attorney-at-Law)
Dusseldorf Appeal Court (20. Civil Senate)
Professor Wilhelm Berneke (Presiding Judge)