Why dishwasher tabs and pasta can be confused

What do the special laws in industrial property protection protect: packaging or product? And what does this protection actually depend on?

Introduction

Industrial property protection protects specific designs, i.e. embodiments of ideas - as a product design, or as a design element, as a very specific feature and possibly also a principle. Products themselves can be protected, but so can packaging designs. The latter can also become iconic: for example, the blue, round Nivea tin, the Toblerone, the Odol bottle or the golden rabbit (also protected by trade mark law). Packaging that is itself iconic and illustrates the iconic product is the Gold Bear pack with glossy foil and viewing window. 

In the case of products, protection may exist via a registered three-dimensional shape mark for the product itself (e.g. the VW Bulli T1), or via a registered design (from armchairs and trainers to lamps and packaging). If design or trade mark law does not intervene, there may also be so-called supplementary competitive performance protection. This concept is subsidiary to special laws and also somewhat more difficult to grasp. According to the standard of § 4 No. 3 lit. a) UWG, packaging can be protected if it is specially designed (e.g. Kerrygold packaging). Here, too, there is a - much more relevant - protection for a product itself. In the past, the Federal Court of Justice has granted this for Flying V guitars, but also for floor plugs or shelving systems. But when does it depend on the product and the packaging for competitive performance protection? And what is protected? 

The decisive factor is the specific purchasing situation. The decisive factor is what the customer immediately perceives. This is clearly illustrated in advertising: fast-moving consumer goods and other mass-produced goods are depicted without packaging. Online, e.g. in meta ads, the products are also regularly shown without packaging. The situation is different in stationary retail and for high-priced products. Here, the packaging is part of the product's story - and the unboxing is part of this packaging. This is clearly demonstrated by the fact that unboxing videos on TikTok can generate millions of clicks (so-called unboxing). This already shows that the purchasing situation is decisive: an expensive product attracts more attention, whereas a cheap product tends to attract less attention. This is hardly surprising from a product design perspective. But it is also legally relevant. What does this mean in practice? Here is a case from last year and a case from this year:

Decision 1

The plaintiff, which sells its dishwasher tabs with a red dot in the centre (the POWERBALL), accused the defendant of causing an avoidable deception of origin by using a similar red element in its tabs. The Higher Regional Court of Frankfurt am Main (OLG) dismissed the action at second instance, as the red dot is not an imitable product and cannot be considered in isolation. It is therefore not covered by protection against imitation under competition law. In addition, the tabs also have different basic colours. And finally, it is not the product itself that is important: This is because the tabs are bought in the pack, not individually. They are also not usually stored individually (without outer packaging). The pack was also labelled with the brand names of the manufacturers. The last lifebuoy thrown, that the tab was also illustrated on the pack, did not help: According to the OLG, a graphic alone is not protected under competition law. Only the packaging was protected here - or more abstractly: what customers perceive as a whole. Individual ideas of an overall design are not protected by competition law (just as little as the labelling with a catchword). Such an individual idea - as in the case of the Stapelstein, for example - must be combined with other design principles in order to be eligible for protection.

Decision 2

The applicant, a Greek company, produces pasta and exports it to Germany, among other countries. It has applied for the EU figurative mark "TERRA GRECA" for pasta (the image shows a field after the straw harvest), while the defendant is the proprietor of the EU figurative mark "TERRA GRECA", which enjoys protection for various foodstuffs, but not for pasta. The image shows a stylised green-yellow sun. The defendant also sold pasta under this trade mark. The OLG denied a trade mark infringement: The identity in conceptual, phonetic and figurative terms means a trade mark infringement in principle, even if the trade marks are not particularly creative for Greek foodstuffs (made from wheat). However, when buying at sight, the special feature is that the public is primarily orientated towards the basic material and the shape of the product - the packaging is of secondary relevance.

Practical advice

If the packaging is important, a trade mark alone is not sufficient when buying on sight. It would have to be a strong brand to ensure that customers immediately recognise the product or manufacturer. This is particularly true when it comes to goods to which experience has shown that customers do not pay the greatest attention. Pasta, according to the OLG, is simply bought according to its packaging. Customers pay attention to the product, not so much to the trade mark. Therefore, even a single good design idea for the packaging is not enough. The same applies to the product as such. As part of an IP strategy, the purchasing situation must therefore always be considered in marketing: How and where does the product face the customer? Are there differences depending on the place or circumstances of purchase? Incidentally, it is still unclear what exactly is important for online sales. The fundamental difference to offline has been recognised in European case law: A distinction is already made there for European trade marks - the perception of a trade mark is, according to the EGC explicitly, not automatically transferable from offline to online.

Finally, it is also important to consider how protection can be enforced in the case of imitation. The mere adoption of (any) design element is not sufficient. In this respect, an overall view is generally necessary in industrial property protection: Neither a red dot nor a brand name is sufficient. The products must also be comparable and the design must be creative. And finally, there is an interaction: in the case of particularly strong iconic property rights, lower requirements apply to a takeover. 

In short, the following also applies in legal terms: the better the idea of the (overall) design, the worse the idea of the imitation.

(OLG Frankfurt am Main, judgement of 6 February 2025 - 6 U 277/21 - Terra Greca)
(OLG Frankfurt am Main, judgement of 1 February 2024 - 6 U 212/22 - Spülmaschinentabs)