Is it permissible to copy the design of a designer handbag?

The Higher Regional Court (OLG) Frankfurt a.M. had to decide whether the design of a ladies' handbag that had been marketed very successfully for many years by a well-known fashion label could be copied and sold by another fashion company, as long as it was sold under their own brand.

A well-known fashion company has been successfully selling a ladies' handbag for many years. A competing company copied the design of the well-known handbag and brought it to market under their own label. The fashion company defended itself against this with a cease-and-desist letter and demanded injunctive relief on the grounds of unfair competition protection of commercial performance, which protects slavish imitations from the perspective of reputation misuse against imitations by competitors.

The competitor refused to provide an undertaking to cease, arguing that the handbag did not possess the distinctive character in unfair competition law required for performance protection, and therefore no infringement existed.

Court decision

The Higher Regional Court (OLG) Frankfurt a.M. decided by judgment of 27.06.2013 – Az. 6 U 27/13 – that the imitation of a ladies' handbag constitutes an infringement of competition law.

The ladies' handbag in question possesses distinctive character in unfair competition law because it exhibits characteristics which, in their combination, appear particularly original and distinctive and which the relevant public recognises. The concrete design of the handbag is therefore capable of indicating its commercial origin to the relevant circles of the trade. The distinctive character in unfair competition law was not subsequently lost through a multitude of similar products which came to market following the start of sales of the original. A loss of distinctive character in unfair competition law should not be assumed as long as the relevant public can still distinguish between the original and the imitations. The copy of the original unfairly exploits the reputation of the original and is therefore to be prohibited.

Summary

Unfair competition protection of commercial performance protects well-known products against imitation by competitors. In practice, however, the threshold for distinctive character in unfair competition law is often not met. It may therefore be advisable to protect the design of one's products by means of registered designs.