Are you a brand owner with registeredtrade mark rights? Or do you have aregistered design or patent right foryour top-selling product? If so, thenwell done – that registration certifi-

cate is likely to be enough on its own to clear thefirst hurdle against infringers, that is, proving theexistence and ownership of rights. But what if aclaimant relies on rights of the unregistered kind?For example, business goodwill, a corporatename, or a reputation in a mark extensively usedbut never protected through registration?

This arises more often than one might think;certain elements of branding, such as shapes orsounds, are not necessarily easily protectedthrough registration, and sometimes a brand 42

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Fighting unfaircompetition in theUK and Germany:An Anglo-GermanperspectiveGermany and the UK both offer brand ownersthe means to protect unregistered IP rights.Angela Fox and Michael Nielen of MaucherJenkins outline the similarities and differencesbetween the rules in the two countries

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owner only realises that regis-tered protection should besought after a third party haslaunched a copycat. In thesecases, proving that an enforce-able right exists at all, and thatthe claimant is entitled to assertit, suddenly emerges as a thresh-old requirement for the ability tobring an action. A would-beclaimant who fails to clear thisobstacle will not leave the start-ing gate.

Actions under the law ofpassing off in the UK and unfaircompetition in Germany there-fore involve more complex evi-dential questions from the startthan ordinary trade mark, de-sign and patent infringementmatters. Nonetheless, the courtsin both countries have provideduseful guidance on how theowners of unregistered rightscan prove them in enforcementproceedings, and thereby act ef-fectively and decisively againstthird parties who trade unfairlyon the back of a brand owner’sinvestment or an owner of aproduct with an unusual con-struction or shape. An under-standing of how to bring suchactions successfully is essentialto a strong IP protection strategyin Germany and the UK, two ofthe most commercially impor-tant jurisdictions in Europe.

United Kingdom In the UK in particular, a suc-cessful action in passing off re-quires a basic grasp of twoimportant concepts. First, an ac-tion under the law of passing offdoes not protect a right per se, or even a reputation,but rather business goodwill situate in the UK.Second, mere association between two brands isnot necessarily determinative of the claim: rather,a defendant’s actions must amount to a misrepre-sentation, amounting to deception, that the defen-

dant’s goods and services arethose of or are somehow relatedto or authorised by the claimant.

Under passing off, what thelaw is protecting is a businessowner’s property right in good-will in the UK, which is definedin case law as “the attractiveforce that brings in custom”. It isnot enough, though, for a brandname, get-up or other brand in-signia to be known to consumersin the UK. There must be cus-tomers in the UK who are capa-ble of availing themselves of theclaimant’s goods and services inthe UK. In Hotel Cipriani SRL vOrs v Cipriani (Grosvenor Street)Ltd & Ors, the claimant’s hotelwas in fact in Italy, but cus-tomers were able to make book-ings by telephone from the UKand through UK travel agents. Amere reputation among Englishconsumers, who are only able toavail themselves of the goods orservices abroad, might not besufficient to give rise to action-able goodwill in the UK. TheCourt of Appeal in Cipriani re-garded the question as arguable,but did not need to decide it inorder to find that the claimant inthat case had goodwill.

How does a businessdemonstrate that it owns action-able goodwill in the UK? Clearlyevidence that it has customers inthe UK and has been tradingthere for a particular length oftime under or by reference to therelevant brand insignia is rele-vant. But a claimant must showsomething more, namely that itsinsignia – its name, get-up, prod-

uct or pack shape or other feature – functions assomething that attracts customers and tells themthat those products and services emanate from orare associated with a particular trade source. Evi-dence of extensive trading, methods of and invest-ment in advertising and promotion, and size andscale of the business under the relevant brand in-signia are all relevant to the assessment.

It is also important, however, to establishgoodwill in the relevant business sector. While itis not unknown for passing off cases to succeedwhere a defendant trades in a different businessfield entirely, it can be far more difficult to provethe required misrepresentation in such circum-stances. In Robyn Rihanna Fenty & Ors v ArcadiaGroup Brands Ltd (t/a Topshop), the claimant Ri-44

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Angela FoxAngela is a partner in Maucher Jenkins’trade mark and litigation groups. MaucherJenkins was created in 2016 following themerger of Maucher Börjes Jenkins andR.G.C. Jenkins & Co. The new Anglo-Ger-man firm has offices in London, Farnham,Munich, Freiburg, Basel and Beijing. Angela is a solicitor and UK registered

trade mark attorney, higher courts litigatorand advocate, European trade mark anddesign attorney and attorney-at-law (NewYork). She specialises in IP litigation andmatters involving trade marks and domainnames; counsels clients on brand protec-tion, strategy and enforcement; and hasextensive experience in clearing and pro-tecting trade marks. She serves as a do-main name panellist for the WIPOArbitration and Mediation Centre. Angela is author of The Intellectual

Property Enterprise Court: Practice andProcedure. Recent work includes headingthe team that successfully representedNestlé before the Court of Appeal againstCadbury’s attempt to register the colourpurple as a trade mark.

Under passing off, what thelaw is protecting is abusiness owner’s propertyright in goodwill in the UK

hanna enjoyed substantial good-will in respect of entertainmentservices – but the evidenceshowed that she was also a styleleader in the world of fashion,who had used her name andlogo in respect of authorised ar-ticles of clothing and whosename when seen in relation toclothing would be understood asdenoting a Rihanna-endorsedproduct or authorised Rihannamerchandise. The High Courtfound that Topshop’s sale of t-shirts bearing an unauthorisedimage of Rihanna amounted topassing off.

Survey evidenceSurvey evidence can also signifi-cantly strengthen a case in pass-ing off where it demonstratesthat a statistically significant seg-ment of the relevant consumeruniverse associates a brandname, get-up or the like with aparticular trade source. In Enter-prise Holdings Inc v EuropcarGroup UK Ltd & Anor, survey ev-idence showed that the Enter-prise “e” logo had an enhanceddistinctive character and was as-sociated with the claimant by sig-nificant proportions ofrespondents. The court went onto find that Europcar, in adopt-ing a similar logo, had commit-ted acts of passing off.

With regard to confusion,the mere fact that some con-sumers, or even a significantnumber of consumers, arecaused to wonder whether theremight be a connection betweena defendant and a claimant isnot enough for the required misrepresentation tobe shown. There has to be more than that – theremust be actual deception, or a likelihood of it, fora case in passing off to be made out. Moreover, thequestion is whether ordinary consumers, purchas-ing with ordinary caution, are likely to be misled– not whether only a so-called “moron in a hurry”would be confused. So, it is necessary to considerwho the average purchaser is, and the ordinarycircumstances in which he or she makes a pur-chase.

Survey evidence on whether consumers arelikely to be confused has fallen out of favour be-fore the English courts, who typically regard con-fusion as a factual question which judges arenormally well-equipped to decide for themselves.

The best evidence of misrepre-sentation is in the form of wit-nesses who have in fact beenconfused, and witness gatheringexercises carried out on thebasis of customer servicerecords, which may uncoverreal instances of confusion, canprovide extremely powerful evi-dence of passing off. Wherethere has been a substantial pe-riod of coexistence without anyknown instances of confusion, aclaimant may have a steeper hillto climb. However, in generalthe mere fact that there is no ev-idence of actual confusion doesnot mean that a court will de-cline to find passing off, sincethere are many reasons why in-stances of confusion may nothave come to light.

GermanyAlongside registered and unreg-istered IP rights, Germany has along tradition of protectionagainst imitations or plagiarismthrough her Unfair CompetitionLaw (UWG). The basic provisionfor the protection against unfairimitations is now in § 4 No. 3UWG (the former identical pro-vision was in § 4 No. 9 UWG).This provision grants protectionif the provider of imitations:

causes avoidable deceptiona)of the purchaser regardingtheir commercial origin, or unreasonably exploits orb)impairs the assessment ofthe imitated goods or serv-ices, or has dishonestly obtainedc)the knowledge or docu-

ments needed for the imitations. This protection under German law does not

have such a strong focus on brand names as in theUK. One reason for this difference might be thebroad protection German Trademark Law givesto unregistered trade names such as companynames or work titles, in addition to registeredtrade marks. But if the focus of an imitation pri-marily refers to the layout of a product packaging,in most cases it is only possible to claim protectionagainst this imitation by Unfair Competition Law.And even if the infringer uses a different trademark branding on the imitated packaging, thismust not necessarily eliminate the deception re-garding the origin of the products (BGH, decisionof 2/4/2009 – I ZR 144/06 – Knoblauchwürste).45

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Michael NielenMichael is a partner in Maucher Jenkins’German IP litigation group. He is a Ger-man attorney-at-law and specialises in IPand unfair competition litigation. Michaeladvises national and international clientson patent, trade mark, design, copyrightinfringement and unfair competition pro-ceedings in Germany. He counsels clientson worldwide trade mark strategies andcoordinates international IP infringementlitigation. He also deals with oppositionand nullity proceedings before the GPTOand EUIPO.Michael obtained a doctorate from the

Westfälische Wilhelms-Universität Münsterfor his thesis on copyright law and haspublished and co-authored a wide varietyof textbooks and papers. He is co-author ofthe new standard book for IP litigationproceedings in Germany (Cepl/Voß –Prozesskommentar zum GewerblichenRechtsschutz). He also regularly holds pre-sentations and seminars on IP rights andunfair competition.

However, there are a number of facets of thisprotection which are not expressly set out in thelegal code but have been developed by the Ger-man jurisdiction over decades and adjusted fromtime to time.

The manufacturer of the original productmust show the individual and distinctive charac-ter of the original (the wettbewerbliche Eigenart).This is an unwritten precondition developed bythe judiciary. In most cases it is sufficient that theproduct layout or shape differs from other compa-rable products on the German market. As the orig-inal manufacturer must provide this informationin court proceedings, it is recommended to gatherdetails concerning the shape, design or technicalfeatures of other competitor’s products from timeto time.

The protection under Unfair CompetitionLaw furthermore requires a certain minimumawareness or recognition of the product on theGerman market. The awareness of the product onforeign markets is not sufficient to claim protec-tion against the imitation on the German market(BGH, decision of 9/10/2008 – I ZR 126/06 –Gebäckpresse).

Protection against imitation by Unfair Compe-tition Law exists alongside the protection of IPrights (OLG Düsseldorf, decision of 31/01/2012 – I-20 U 175/11 – Apple v Samsung – Galaxy Tab) andcan even be claimed if a corresponding IP righthas expired (BGH, decision of 22/1/2015 – I ZR107/13 – Exzenterzähne). In particular, if a patentor design right will expire in the foreseeable fu-ture and the corresponding product is still a top-

seller, the owner should prepare for the protectionof this product by Unfair Competition Law in duetime by gathering all information about the recog-nition of its own product and its specific charac-teristics compared to the rest of the market.

But even if you think you have a strong legalprotection for your product against the infringe-ment of IP rights or the imitation of your product,you must act carefully if you want to use warningletters. For example, there has been a recent trendfor IP right owners to try to stop the distributionof the infringing products on internet market-places such as Amazon by informing the providerabout the infringement, rather than attacking thealleged infringer or imitator directly. This is typi-cally done without warning to the primary origi-nator of the product. In this case the owner of theIP right must give all necessary information con-cerning the IP rights and the alleged infringementof these rights to the provider of the market place(LG Düsseldorf, decision of 11/2/2014 – 4a O88/12). Otherwise the supposed infringer is al-lowed to claim for protection against the unfair ob-struction by the IP right owner.

At Maucher Jenkins, we have successfully de-fended our client, Pearl, by obtaining an injunc-tion from the Düsseldorf district court against aUS company. The US company had German util-ity models for certain 3D printing devices and en-gaged in the practice of making overstatedcomplaints of IP infringement to Amazon to blockPearl’s products from being sold through thatcompany. We brought evidence before the Courtthat that the US company’s utility models werelimited in ways that did not read onto Pearl’s prod-ucts and that the US company concealed essentialfacts regarding the scope and validity of theirrights when filing its complaint with Amazon.The District Court of Düsseldorf, the leadingcourt for patent infringement proceedings in Eu-rope, issued an injunction against the US com-pany, which has now been recognised by thelatter as final settlement.

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Protection under Germanlaw does not have such astrong focus on brand namesas in the UK