Smell-alike perfumes - the Bundesgerichtshof's view

On 5 May 2011, the First Civil Senate of the German Federal Supreme Court (Bundesgerichtshof) which is, inter alia, responsible for competition law matters decided that trading with smell-alike perfumes, that are imitations of perfume products that are bearing a protected trade mark does not qualify as unlawful (unlauter) comparative advertising in the sense of Article 6 (2) No. 6 German Unfair Competition Act (UWG) if there is no clear and obvious imitation of the original perfume but where the smell-alike perfume merely evokes an allusion of the original products (case reference: I ZR 157/09 - Creation Lamis).

By way of background: Article 6 UWG is based on Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising, in particular its Article 2 (c) and its Article 4.

The facts: the defendants were offering low priced perfumes on the Internet under the mark "Creation Lamis". These low priced perfumes had similar smells to those of expensive perfume brands. The defendants initially also used ‘comparison charts’ which compared the defendants' smell-alike perfumes with the respective high priced original perfume brand. The defendants had, however, ceased using the comparison charts in recent years.


The claimant, who is a distributor of high priced luxury perfumes brands, took objection to this in its view unfair business practice. The claimant argued that the defendants’ offering, advertising and distribution of the smell-alike perfumes amounted to unfair competition since the smell-alikes were recognisable as imitations of the claimant's high priced original perfume brands all of which where registered as trade marks. The claimant had been unsuccessful in the lower instance courts insofar as it had tried to prevent the defendants' trade with the smell-alikes without the use of comparison charts. In this regard the Bundesgerichtshof allowed the claimant's appeal and sent the case back to the court of appeal, the Kammergericht Berlin.



The Bundesgerichtshof explained that Article 6 (2) No. 6 UWG does not prohibit to imitate an original product. Furthermore, it will not amount to unfair comparative advertising in the sense of Article 6 (2) No. 6 UWG where the original product is recognisable due to the get-up and labelling of the respective imitation (here the smell-alike) even if its advertising evokes certain allusions. What is prohibited under Article 6 (2) No. 6 UWG is a clear and definite imitation statement (Imitationsbehauptung) which makes it clear by itself - and without the need to consider any additional circumstances - that the advertised product is advertised as a copy of a certain and specific original product.


The court of appeal had assessed the question as to whether there was a clear and obvious imitation statement by looking at the end user's perspective and decided that there was no imitiation in the sense of Article 6 (2) No. 6 UWG in this case. The Bundesgerichtshof confirmed that the court of appeal had determined the facts correctly with regard to the end-user perspective.

However, the Bundesgerichtshof found that the court of appeal's decision had not discussed the claimant's argument that the defendant had also targeted retailers with its smell-alike perfumes and not only end users. The claimants had argued that retailers, who had a more specialised knowledge, would have recognised the defendants' smell-alike perfumes as clear imitations of the original luxury perfumes due their 'get-up' (Ausstattung) and their allusive names. In this regard the Bundesgerichts stressed that where an advertisement was targeting different groups of consumers, it was enough to render such an advertisement "unfair" if the conditions of Article 6 (2) No. 6 UWG where met for only one group of the consumers targeted (here: the retailers). As such, the Bundesgerichtshof decided to overturn the court of appeal's decision and send the case back to the court of appeal. The Bundesgerichtshof also held the court of appeal should examine whether the defendants' advertising towards retailers amounted to an exploitation of the reputation of the claimant's trade marks.


While some German observers have already stated that the court has made it easier to trade with smell-alike perfumes due to the relatively high threshold for the application of Article 6 (2) No. 6 UWG, it should be kept in mind that the court of appeal might find that retailers would easily recognise the smell-alikes as imitations of one particular perfume. This Kat will be interested to read the Bundesgerichtshof's decision in its entirety once it becomes available, as well as the Kammergericht Berlin's actual decision in this particular case. Perfumes clearly make for interesting trade mark cases.


The court's press release can be retrieved by clicking here (in German)
Perfume for cats - here.

BGH: if it looks the same, it must have the same quality

An interesting case was decided by the German BGH on 15 April of this year (the grounds for the decision only became available on 29 October). The plaintiff Waldemar LINK GmbH & Co. KG had marketed since 1982 a femur prosthesis (hip replacement) under the brand "SP II". This femur prosthesis has a characteristic S-shape (see red line in the image, for nit-pickers, from this angle it's an inverted S-shape) that has many benefits and was covered by a patent that expired. It is very successful and enjoys a high reputation for quality in the market. After expiration of the patent, a competitor started selling a hip replacement under the label "AS PLUS" which resembles very closely the "SP II" model of the claimaint.

Waldemar LINK GmbH & Co. KG brought suit against the competitor based on unfair competition. Both first instance courts (LG and OLG Hamburg) dismissed the claims.

There was no likelihood of confusion between the products because of the different signs ("SP II" versus "AS PLUS") they were marketed under.

While the SPII product enjoyed "wettbewerbliche Eigenart" (I will not try to translate this concept), this could not form the basis for an injunction given the technical necessity of the form (para. 22).

Post-sale confusion was also ruled out under the particular circumstances; a surgeon is expected to carefully plan an operation and is highly unlikely to just take the "wrong" prosthesis simply because it looks similar (I certainly hope so! Those interested can find a guide on how to implant the replacement here - don't do this at home, lawyers.).

But, and here it gets interesting, the BGH held that (para. 51):

Da der gute Ruf des Produkts der Klägerin auf dessen Qualität beruht, wird er unangemessen beeinträchtigt, wenn ein nahezu identisches Produkt nicht denselben oder jedenfalls im Wesentlichen denselben Qualitätsmaßstäben genügt, die der Originalhersteller durch seine Ware gesetzt hat.

I'll try a translation:

Because the good reputation of the plaintiff's product is based on its quality it is inappropriately impaired when an almost identical product does not meet the same, or at least essentially the same, quality standards that the manufacturer of the original product has set by his product.

Because the lower court had not made any findings on the quality of the competitor's product, the case was sent back for additional findings.

In other words: you can market a product that looks very similar to the market leader, but only if it in fact is very similar (quality-wise) to the market leader. A very interesting development, and it reminds me of the thesis advanced by Roland Mallinson (Taylor Wessing) and Andreas Lubberger (Lubberger - Lehment) at the MARQUES Conference in Berlin that if a look-alike creates an association with a market leader, this is a form of comparative advertising and as such only permissible if the products are indeed comparable - also quality wise. And suddenly, courts have to go on a fact finding mission regarding the quality of look-alikes...

Free speech versus trade mark rights at the Swiss Indoors

Trade mark parody cases always draw a lot of interest - maybe more than justified by their commercial (in)significance, but the boundaries of free speech imposed by trade mark law and unfair competition law are a fascinating topic.

An interesting case has just been published in Switzerland: A non-profit organisation put up an anti-tobacco site under the domain davideathswissindoors.ch, criticizing the sponsorship of a sports tournament by a tobacco brand ("using tennis to sell death"). The website features a parody of the official Davidoff Swiss Indoors logo that requires a close look to distinguish it from the original (see right).

Davidoff was not amused and obtained an ex parte injunction against the further distribution of the website. Game one for Davidoff, so to speak.

It was a short lived triumph, however, because after the hearing, the injunction was lifted. Davidoff had based its complaint on both trade mark law and unfair competition law (a copy of the complaint is here [in German]), but did not really stress the trade mark claim. Since under Swiss law the trade mark owner can only enjoin the commercial use of the mark, and the website did not offer anything for sale, this is understandable. Davidoff's main argument was that the use of the modified logo was "needlessly disparaging" ("unnötig herabsetzend") in the sense of Federal Act against Unfair Competition. The Act applied whenever a behaviour had an influence on the market, it did not require a competitive relationship between petitioner and respondent.

The Civil Court of Basle agreed that the Act against Unfair Competition was applicable, but saw no violation (likelihood of confusion was not specifically addressed; I assume the court did not see any). It was permissible to provoke in an attempt to change the public perception of a criticized behaviour. Since the brand owner used emotionally charged images in his communication, so could the critics. Exaggeration and distortion was not against the law as long as it did not suggest a non-existing relationship; here, the relationship between tobacco and death was given. The court distinguished the case from an older case decided by the Austrian High Court (13 Sept 1988, 4Ob48/88). The Austrian High Court had found it unfair that tobacco critics had singled out a single brand ("Only a camel would go a mile for a cigarette") to target their criticism of tobacco in general, which applied to any cigarette brand. Here, however, the respondent specifically criticized the sponsoring of a sports tournament by a tobacco brand, and only the petitioner is sponsoring the tennis tournament.

First set 6:1 to the respondent. Davidoff could have continued the match but chose, probably wisely so, not to file suit in ordinary proceedings on the merit. One could say it retired

(Full text of the reasons only available behind a pay wall; the abstract is here [German/French]).

Disparaging patent specifications, or your fish can stinks

Patent specifications often contain a part that explains the perceived disadvantages of the state of the art. In the case of the German patent DE 43 32 545 for a tear-off lid of sheet metal for a can, filed in 1993, the specifications explain various alleged disadvantages of the invention according to EP 236 736.

The plaintiff produces fish cans according to EP 236 736 and took exception to the description of the technology in the German patent. He sued, and I am not pulling your leg, the patentee based on an unfair competition and general tort (Deliktsrecht) claim, demanding deletion of four allegedly incorrect and disparaging ("herabsetzend") statements from the (granted and published) German patent.

Both lower courts, after obtaining an expert opinion, concluded that the characterization of the disadvantages of the state of the art was indeed wrong, held for the plaintiff and demanded deletion of the incorrect statements about the prior art.

The German Federal Court (BGH) reversed (I ZR 46/07, 10 December 2009): The German Patent Act exclusively regulated under which circumstances a third party had a right that a patent application or a granted patent be amended or revoked. This excluded any claim on another legal basis, such as unfair competition or general tort law. The BGH saw one possible exception when the disparaging remarks in a patent (application) were wholly unrelated to the invention, but this was not the case here (hmmm, one can think of funny examples here... but none of them very realistic). Since patent law did not foresee a claim for amendment of an incorrect description of the (perceived disadvantages of) the state of the art, the claim had to fail. Which, the IPKat assumes, comes as a relief to German patent attorneys because it is one less thing to worry about - writing a patent application that withstands all attacks being hard enough as it is.

BGH: misleading use of the symbol ® - the "Thermoroll" case

In a notable decision of 26 February 2009 (case reference I ZR 219/0 “Thermoroll”) - which was only recently published in its entirety - the German Federal Supreme Court (BGH) decided that it is “significantly misleading” and consequently an unfair commercial practice under section 5 German Unfair Competition Act, if someone uses a trade mark in conjunction with the ® symbol without being the owner or licensee of the mark or without being otherwise authorised. Things may be judged differently only if the unauthorised user is the proprietor mark of a trade mark that is similar to the trade mark that was used together with ® symbol and use of the mark amounts to “genuine use” of the registered mark under Article 26 (3) German Trade Mark Act.

The facts of the case are a rather complicated and may be simplified as follow: both parties, the claimant and the defendant, were companies active in the field of curtains and blinds and involved in a dispute over the use of the mark Thermoroll. To make things even more complicated, the mark Thermoroll was a registered trade mark which, inter alia, covered blinds, curtains, but which was owned by third party that was not involved in the court case. The claimant, however, was the owner of a trade mark registration for the similar mark Termorol [IPKat: minus the “h” and with one “l” only] but had [for valid reasons which we will not mention since they would confuse matters further] used advertising material that included the sign Thermoroll together with the symbol ® before February 2006 even though it (the claimant) was only licensed to use Thermoroll from February 2006 onwards. The defendant filed counterclaims for information and damages against the claimant arguing that that the use of the mark Thermoroll in combination with the ® symbol constituted misleading advertising under section 5 of the German Unfair Competition Act.

The Higher Regional Court of Karlsruhe, the court of appeal, had decided in favour of the claimant and had taken the view that the slight differences in the spelling of the marks (Thermoroll v Termorol) were not significant enough to mislead consumers and so fell out of the ambit of the Unfair Competition Act.

On further appeal, the BGH disagreed with the Karlsruhe court and decided that the claimant’s unauthorised use of the mark “Thermoroll®” before 16 February 2006 constituted misleading advertising. The fact that the claimant had been authorised to use the similar mark “Termorol”, which was registered for identical goods, did not change that its use of the “Thermoroll” mark was misleading.

The court held that the use of a trade mark used together with the ® symbol suggested two things to the relevant consumers: firstly, the existence of a registered trade mark spelled exactly as used in the advertising and secondly, that the advertiser was authorised to use this mark in its advertisement, either as trade mark owner or licensee.

The court took the view that use of a third party trade mark which not merely “insignificantly” differed from the advertiser’s own trade mark was caught as an unfair practice under unfair competition law. The differences between both marks could only be considered as insignificant if the mark used merely differed in elements which did “not alter the distinctive character of the mark in the form in which it was registered” as stipulated by Article 26 (3) German Trade Mark Act. Article 26 (3) German Trade Mark Act relates to “genuine use” of a trade mark.

Applying these principles, the court decided that use of “Thermoroll” did not constitute genuine use of “Termorol” mark under Article 26 (3) German Trade Mark Act due to the aural and conceptual differences between both marks and due to the fact that the relevant consumer would associate prefix “Therm-” with heat. Consequently, the differences between he marks altered the distinctive character of the registered mark and had therefore crossed the threshold of an “insignificant alteration”.

Given the claimant itself had considered the “Thermoroll®” mark as very important and had expected that its use would have a positive effect on consumers, it had obtained a competitive advantage by implying to be authorised to use the third party trade mark. The court found that the relevant consumers had been mislead and had taken a purchasing decision that they would otherwise not have taken. The court emphasised that it was a main purpose of prohibiting misleading practices to prevent competitors from using false information in the course of trade.


IPKat comment: the BGH provides us with some food for thought. The “take home” point appears to be that advertisers should make sure to use the mark as registered when using it in combination the ® symbol. Otherwise, in cases where the use of the similar mark crosses the threshold of an “insignificant” alteration, there is a genuine risk of falling within the ambit of Unfair Competition Law. In other words: using the ® symbol in combination with a registered trade mark in the course of one’s business (i.e. in advertising) without being authorised to use the mark will be seen as significantly misleading and consequently constitute an unfair commercial practice under the German Unfair Competition Act.

This Kat would be very interested in our readers’ views.

• The decision can be accessed by clicking here.
• Cat shower curtains (as the one depcited on the left above), can be purchased via http://www.showerail.com/ where the picture has been taken from.