Federal Supreme Court establishes more stringent requirements for protection against imitation

For several years now, Lubberger Lehment has been representing the honey manufacturer LieBee GmbH in an ongoing dispute with the jam manufacturer Göbber GmbH. The subject of dispute is the allegation of an unfair imitation, which the manufacturer of GLÜCK jam sees in LieBee honey. Lubberger Lehment have already been able to defend LieBee successfully against attacks on a second and third product design (see District Court of Hamburg, judgment of 20 January 2022, case ref. 327 O 44/21, final and binding). With the GLÜCK decision of the Federal Supreme Court of 7 December 2023, case ref. I ZR 48/22, the decision of the Higher Regional Court of Hamburg regarding the first LieBee product design has been overturned. The Higher Regional Court of Hamburg had found the honey jar to be an unfair imitation of GLÜCK jam in the form of indirect deception of origin (mittelbare Herkunftstäuschung). Now the Higher Regional Court of Hamburg has to decide once more.

The decision of the Federal Supreme Court contains new and fundamental guidelines for protection against unfair imitation:

– The German law on unfair imitation does not provide for protection of specific concepts for product designations. The subject matter of protection is the specific design of a product, not the idea behind it.

– The fact that differing product and manufacturer information on products of daily use can rule out a deception about the commercial origin is also applicable in cases in which the design of the packaging clearly stands out from the market environment.

– Product names can have the same effect of indicating origin as clearly recognizable manufacturer names.

– Unfair imitation is not ruled out by the products at issue being different. However, such a difference leads to special requirements for the unfairness criterion, due to the fact that certain categories of indirect deception of origin (deception about a secondary trademark (Zweitmarkenirrtum)) are not applicable to non-identical products.

Our client LieBee GmbH was represented in the proceedings by our Berlin partners Dr. Andreas Lubberger and Eva Maierski. Axel Rinkler represented our client before the Federal Supreme Court.

Here you can find the JUVE press release.