Effective protection against imitations at the Confectionery Trade Fair

09.01.2015

Trade fairs are irreplaceable for the exchange of innovations, ideas and inspiration. Trade fairs are irreplaceable for business. Trade fairs can generate a spirit of optimism. On a large scale for the entire industry or on a small scale for the individual companies. Trade fairs, however, can

Trade fairs are irreplaceable for the exchange of innovations, ideas and inspiration. Trade fairs are irreplaceable for business. Trade fairs can generate a spirit of optimism. On a large scale for the entire industry or on a small scale for the individual companies. Trade fairs, however, can also become a bitter experience. In particular if an unscrupulous competitor displays imitations, perhaps even in the same place where the company's goods are on display.

This is what happened to De Beukelaer. An almost identical copy of their “Mikado” cookie sticks was exhibited by a foreign competitor. De Beukelaer defended itself and Cologne Higher Regional Court considered the imitation to be an anti-competitive therefore misleading to domestic consumers. The Federal Court of Justice, however, set aside this judgment (judgment of 23.102014, Case: I ZR 133/13). Not because it assessed the imitator differently but because it had only been proven that the imitator presented the product at the trade fair. Simple presentation at a trade fair cannot be the basis for an assumption that the product is also actually on offer domestically. But what can we learn now from the judgment? Is it actually possible to initiate proceedings against imitations at trade fairs? Yes, effective proceedings are possible. This requires concentrated action between manufacturers and their attorneys. An overview of the most important principles:

1. Preparation
Expect the imitator to know what they are doing and act in an appropriately clever and prepared manner. You need to be just as prepared. If you are aware of a potential imitator, check whether they are exhibiting at the trade fair. Also check whether they deliver to or supply Germany. Collect material accordingly. In order to avoid decisions such as the one above, manufacturers must be able to prove in case of doubt that the imitator also supplies Germany. Even if exhibiting does not result in a legal assumption of offering, in fact, this is often the case. And anyone making an offer must necessarily do so to third parties. The chances of exposing the imitators are therefore good. If this is unsuccessful despite all of these efforts, it may at least be possible to prohibit the exhibition.

2. Speed
A trade fair means business and in our experience, most of the business is done over the first few days, so be aware that your competitor is expecting already to have completed a significant amount of business before you are able to prevent the imitation. So act quickly. Major courts often have an emergency service at large trade fairs, which can act quickly and effectively even on Saturdays. If the manufacturer and attorney work well together, an injunction can be issued very quickly, sometimes within a day, six days per week.

3. Proceedings
In cases relating to trade fairs, the courts often make decisions based solely on your submission. They therefore usually issue an order without hearing the other side. Take advantage of this effect of surprise effect. The injunction can be issued by the court officer directly at the trade fair. If this happens early enough, the infringer will not be able to perform a lot of business with the imitations. His strategy fails to succeed. A decisive factor can also be the deterrent effect, because who would like to have a court officer at their trade fair stand.

4. Remedies
All intellectual property rights and copyrights can be used as the basis for an application. In our experience, applications based on registered protective rights – in particular marks and registered designs – have the best and quickest chances of success. If, as so often, the product for packaging form is important in addition to the design, the registration of three-dimensional marks should also be considered. The protection of your product at the trade fair therefore begins already with careful registration. If you do not hold any registered trademark rights, you can refer to the presence of an anti-competitive violation. It may also be possible to assert a claim for unregistered designs or copyrights.

5. Cost
If your application is justified, the costs of the proceedings and the attorneys that you hire will in principle be the responsibility of the imitator. If, in addition, the imitator is headquartered outside of the EU, additional legal measures can be taken in order to secure the costs incurred on a preliminary basis all at least to make later enforcement easier.

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