No protection against imitation for bongs

Insofar as the products in question do not enjoy special legal protection, for example because a design or trade dress has been registered, the principle of freedom to imitate applies. From a competition law perspective, this is in turn restricted if product imitation causes confusion as to the origin of the product or constitutes unfair exploitation of reputation. Whether this is the case with certain glass water pipes, so-called "bongs", was a matter the Higher Regional Court (OLG) Frankfurt/Main had to decide.

Both contracting parties distribute glass water pipes (bongs), with one claiming to possess the original. This original was systematically imitated by the competitor both as regards form and colour. In fact, various features were also found in the imitated product, which resulted in an action seeking an injunction against product imitation. This action was dismissed by the Regional Court (LG) Frankfurt/Main, whereupon the unsuccessful manufacturer of the alleged original appealed.

The Court's Decision

The Higher Regional Court (OLG) Frankfurt/Main dismissed the appeal by judgment of 20.01.2015 (Az. 11 U 101/12) and thereby upheld the first instance decision. In the Court's view, several features of the original had indeed been adopted. However, none of these elements, either alone or in combination with others, was distinctive of the plaintiff's bong models. Rather, the features were found in all manner of combinations with other manufacturers as well, so that sufficient individuality and distinctiveness could not be established. Moreover, confusion as to origin was to be rejected because the alleged imitations are prominently marked with the manufacturer's logo. As a result, confusion with the plaintiff's product – which is likewise marked – and thus the existence of unfair product imitation are factually precluded.

Conclusion

Outside of special legal protection, it is difficult, due to the principle of freedom to imitate, to generate supplementary competition law protection against product imitation. Such protection does not exist merely by virtue of the presence of product imitation; rather, it additionally requires the existence of a certain distinctiveness (recognition effect) of the original and the presence of particular unfair circumstances. Only if the public, in light of the imitation, assumes that it originates from the manufacturer of the original as such, or if there is exploitation of the good reputation of the original, does protection against product imitation also exist.