Already some time ago, the German Federal Court of Justice (Bundesgerichtshof, BGH) acknowledged a supplementary protection based on unfair competition law (Sec. 4 No. 3 German Act against Unfair Competition, UWG) also for products, for which patent protection had lapsed. However, such protection against imitations only applies in cases, in which the relevant product features are independent of the patented technical solution (BGH, judgment of 2/1/2015 – I ZR 107/13 – eccentric teeth).
In a recently published decision, the Court confirmed that approach – and in addition, it held that supplemental protection against imitations is available even if the claimed product form is not eligible for 3D-mark protection (BGH, judgment of 15/12/2016 – I ZR 197/15 – soil dowel). The product-in-suit related to a soil dowel design protected originally by means of a 3D Union mark. In the course of the dispute, EUIPO declared the trademark invalid, because all features of the claimed soil dowel form were necessary in order to fulfill its technical purpose of fixing an item into the soil (see Art. 7 para.1 lit. e ii EUTMR).
However, also a lacking monopolization of a product form by means of a 3D mark does not exclude a supplemental protection based on unfair competition law, according to the Court. Unlike technical property rights, trademarks or design rights, supplementary protection against imitations under Sec. 4 no. 3 UWG does not provide an overall protection against imitation of (also technically) products as such. Such protection rather serves as safeguard for specific achievements against imitations, which are deplorable due to a competitor’s unfair behavior. Accordingly, one of the specific aspects describing such behavior must be fulfilled additionally, namely causing an avoidable deception of the commercial origin of the imitated product, unreasonably taking unfair advantage of or being detrimental for the product reputation, or dishonestly obtaining information or documents necessary for a product imitation.