Use of product symbols unfair?

The Federal Court of Justice (BGH) had to decide whether Pelikan was permitted to use symbols which Epson uses almost identically to describe the suitability of its cartridges for its printers.

Epson produces and distributes printers and matching colour cartridges, on the packaging of which, in addition to the article number and the designation of the printers for which they are suitable, image motifs such as teddy bears, rubber duckies or parasols are affixed. The symbols also serve to assign the respective cartridge to the matching printer. Pelikan Group manufactures ink products, including printer cartridges for Epson devices. To mark the possible uses, Pelikan marked its packaging with similar image motifs as Epson.

Epson considered this adoption of the image motifs to be unfair due to impermissible exploitation of reputation and terminated Pelikan's conduct according to the principles of competition law protection of performance. Pelikan refused to issue a declaratory statement on cessation and desist and referred Epson to legal proceedings. Both the Regional Court (LG) and the Higher Regional Court (OLG) Düsseldorf ruled in favour of Epson and prohibited Pelikan from using the images.

Court decision
In itsUrteil vom 28.09.2011 – Az. I ZR 48/10– Teddy Bear – the Federal Court of Justice (BGH) overturned the first instance judgements and permitted Pelikan to use the image motifs.

The BGH found that owners of Epson printers orient themselves primarily by the image motifs with regard to the suitability of printer cartridges, so that Pelikan's use of them – also in the interests of consumers – had to be permitted.

Conclusion

Where images or logos are used to identify certain product types, competitors may freely use these to identify the compatibility of their products with those of their competitors without thereby infringing competition law. With regard to the use of identical images, however, caution is advised, as in such a case cessation could have been possible from a copyright perspective.