Product imitation by similar pharmaceutical packaging

As decided by the Higher Regional Court (OLG) Cologne, the considerable reputation of a pharmaceutical product can result in above-average competitive distinctiveness of the packaging, such that a competitor's merely similar packaging also constitutes unlawful product imitation. This applies regardless of the product designation and the particular sales situation in the pharmaceutical sector.

The pharmaceutical product "Tebonin" (a preparation based on the active ingredient Ginkgo Biloba mono extract) has been distributed in Germany since 2003 and has achieved considerable reputation due to intensive advertising. As a result, the manufacturer has become the market leader in this field. Overall, the company distributes a good dozen different products under the brand "Tebonin", so that one can speak of a product line. The preparations are, like the competitor product, pharmacy-only and in some cases available without prescription.

The packaging design of the original product always follows the same pattern (colour combination white/magenta, divided horizontally):

The competitor product "Binko" is designed as follows:

In the at least similar design of the product packaging, the manufacturer of "Tebonin" sees unlawful misleading as to origin and thus an unfair product imitation.

The Court's Decision

The Higher Regional Court (OLG) Cologne – unlike the court of first instance Regional Court (LG) Cologne – upheld the injunction directed against the distribution of "Binko" in the packaging described above in its judgment of 28.05.2014 (Az. 6 U 210/13). In the court's view, the colour combination white/magenta characterizes the overall impression of the original product, which through extensive advertising over a long period has also achieved considerable reputation and thus above-average competitive distinctiveness. The contested design likewise exhibits these distinctive elements, which is why product imitation must be assumed. This leads to confusion among the relevant circles of trade, since the packaging design would be perceived as an indication of the business origin.

Although a comparison of the packaging reveals clearly perceptible differences, according to the court's reasoning the deviations are immaterial because the original product remains recognizable. This is not altered by the marking with the non-confusable brand "Binko" and the particular sales situation in the pharmaceutical sector. Above all, in the OTC sector, the product name may play a subordinate role and would often be understood only as a mere trade name. As a result, according to the court's judgment, the manufacturer of "Binko" has not exhausted the design options reasonably required of it to avoid misleading as to origin.

Conclusion

The judgment is a single-case decision that should not be transferred without careful consideration to other purportedly similar cases. Decisive for the assumption of unfair product imitation despite the presence of a mere imitative adoption was the fact that "Tebonin" is a product line with considerable reputation. Surprising is the court's view that even marking with a completely different brand ("Binko") should not be sufficient to avoid misleading as to origin. This may require a detailed market analysis to avoid the charge of product imitation based on packaging design.