First published in BARDEHLE PAGENBERG IP Report 2008-V at

On April 30, 2008 Germany's Federal Supreme Court issued a further ruling, contributing to a set of 3-D trademark decisions related to the requirements of successful enforcement and, in particular, the mark-in-suit's scope of protection (see also IP-Report 2007/IV No. 5).

The claimant's product is a range of suitcases that are being sold in Germany for fifty years in the shape as shown below, having been registered by way of German 3-D trademarks for "cases and suitcases (made of aluminium or plastic)" as exemplarily depicted below:

The defendant was sued for distributing the below "Beauty-Trolleys" in Germany.

The Cologne District Court granted corresponding claims for cease-and-desist plus further claims for damages etc. The Cologne Appeal Court lifted said decision and denied the asserted claims. The Federal Supreme Court now overruled the Appeal Court's decision, starting by drawing a clear distinction between IP protection on the grounds of IP rights conferred by a registered (or non-registered) 3-D trademark, on the one hand, and, on the other hand, parallel protection provided by German unfair competition law ("passing off"). The latter protection, says the Court, is necessarily linked with the protection of a concrete product or product range, claiming specific features of origin ("competitive individuality") which if copied would cause an avoidable deception as to the origin (Section 4 No. 9 lit a Act against Unfair Competition). Such protection would not conform with the essence of trademark law.

As regards asserted claims for trademark infringement, the Court held that the distinctive character of the 3-D mark-in-suit had an impact on whether consumers perceive the underlying shape as an indication of origin when being confronted in public with this shape as the shape of the claimant's underlying product. If said product had been extensively marketed and sold over fifty years, this could amount to an increased distinctiveness of the 3-D-mark-in-suit through use – a consequence ignored by the Cologne Appeal Court.

Turning to asserted claims under German unfair competition law, the Supreme Court confirmed that for a full product range of cases and suitcases corresponding protection against misappropriation may be claimed when showing similarities as to purpose and design. It is not necessary, said the Court, that competitive individuality can be claimed for each of the single products, unless the recurring characteristic features of appearance would cause a clear distinction, in the perception of the public, between the products belonging to the product range and products of other competitors – an aspect also ignored by the Cologne Appeal Court.

Due to the above inconsistencies and deficiencies, the Federal Supreme Court remanded the case to the Cologne Appeal Court for review and decision.


Click here to read our IP Reports section from our website

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.