In its recent decision “Leuchtballon” (judgment of September 14, 2017 – I ZR 2/16), the German Federal Court of Justice further developed its case-law on anti-counterfeiting protection for technical products.
According to the law, a deception of purchasers caused by strong similarity of a lookalike to the original product may not be actionable if such deception is, under the circumstances of the case, unavoidable. The Federal Court of Justice found such unavoidability to exist in the case before it. The case was about a balloon-like spring lampshade light to be installed on a high post for illuminating construction sites etc. A peculiarity of the case was that the defendant could attach own markings or colorings to its product for ensuring a distinction from the original products, as the users needed the areas for their own advertising purposes. Under these circumstances, the Federal Court of Justice found it sufficient that the defendant had designed the proportions of the balloon’s upper side and bottom markedly different from those of the original product.
In the case at hand, it proved essential that the copied features were, while not without alternative, of technical nature and that the lookalike could not be regarded as an (almost) identical copy. It follows that under such circumstances a deception of purchasers may not be actionable, if the imitator has used all available means to create a distinction.