Injunction against imitation of illuminated paving stones?

In the present case, the Higher Regional Court (OLG) Frankfurt a.M. had to decide whether a manufacturer of lighting fixtures could prohibit its competitor, from a competition law perspective, from also distributing LED-illuminated paving stones.

The parties are competitors in the field of manufacture and distribution of lighting fixtures. Both manufacture so-called illuminated paving stones. These are paving stones cast in a single block and illuminated using LED technology, which are modelled on paving stones hewn from natural stone and are intended for installation in a paved surface.

The manufacturer was of the opinion that its illuminated paving stone possessed distinctive character in competition law both on account of its aesthetic design and on account of its technical solution. The competitor's illuminated paving stone was, in its view, a copy of its product. It issued a cease-and-desist notice to its competitor with a fee and demanded an injunction.

The competitor did not issue an injunction and argued that the design of the illuminated paving stones was predetermined by the natural model. Moreover, the relevant public did not have the impression that illuminated paving stones could only come from one manufacturer.

Court decision
In its judgment of 28.10.2010 – Az. 6 U 87/09 the Higher Regional Court (OLG) Frankfurt a.M. decided that an illuminated paving stone made of transparent plastic and fitted with an LED lighting fixture, which corresponds in size, shape and surface texture to a hewn natural stone paving stone, lacks distinctive character in competition law and is not eligible for competition law protection of performance.

For the assumption of distinctive character based on aesthetic features, it is not decisive that the individual elements used in the design of a product are original. What is decisive is rather whether, in their combination, they give the product a character that enables the relevant public to draw a conclusion about its commercial origin. The product must stand out from other comparable products to such an extent that the relevant public concludes that it comes from a particular undertaking. This is not the case here.

Conclusion

The manufacturer could not credibly demonstrate here that the relevant public assumes that illuminated paving stones come from its company as a matter of principle. It had failed to register protective rights corresponding to the idea it had created. Had it registered a design right for the illuminated paving stone, the OLG would have reached a different decision here.