Unfair imitation of shoe soles?

Insofar as products in question do not enjoy special legal protection, for example because a design or trade dress is registered, the principle of freedom to imitate applies. However, this is restricted where product imitation causes confusion as to the origin of the product or amounts to misappropriation of reputation. The Higher Regional Court (OLG) Düsseldorf had to decide whether this was the case with certain sports shoe soles.

A sports shoe manufacturer distributes its products with a sole that is designed in a particular manner.

Another manufacturer is alleged to have imitated the shoe soles of the competitor and was sued by the competitor for an injunction. The aim was to prohibit the company from distributing shoes with the particular sole.

The Regional Court (LG) Düsseldorf rejected the application for a preliminary injunction.

The decision of the court

The Higher Regional Court (OLG) Düsseldorf agreed with judgment dated 19.04.2016 – Az. I-20 U 143/15 the Regional Court (LG) Düsseldorf.

Regarding the design of a sports shoe sole, in the view of the Düsseldorf judges, no claims for unfair imitation based on supplementary competition law protection of performance can be asserted.

Although the relevant circles of commerce would regard a high-quality sports shoe with a certain degree of care, neither consumers nor retailers were accustomed to inferring the origin of a sports shoe from the design of a sole surface – particularly where the shoes were marked with clearly different indications of origin, such as the well-known brands of the parties and accordingly pay little attention to the sole surface.

Conclusion

Outside the scope of special legal protection, it is difficult, owing to the fundamental principle of freedom to imitate, to establish supplementary competition law protection of performance against product imitation – and this applies equally to shoe soles.