Background
The parties act as competitors in the field of merchandising products, in particular in the sale of historical tin signs for well-known brand products.
The reason for the proceedings was the offer and advertising of a tin sign with the Maggi brand motif by the defendant without first obtaining the consent of the trade mark proprietor. The offer was accompanied by the following notice:
„Retro tin sign with historical depiction as a decorative element. The trade mark proprietor has not consented to the offer and sale of the product. This restricts the marketability of the product. It can only be used for private use.“
In summary proceedings, the applicant then sought an injunction against the offer, based on the allegation of trademark infringement and various criminal offences, in particular receiving stolen goods pursuant to Sections 259 and 260 of the German Criminal Code (StGB), in conjunction with the claim for injunctive relief under competition law pursuant to Section 8 UWG. In particular, he accused the defendant that the sign was a plagiarism that had been manufactured in China.
However, the Regional Court of Frankfurt am Main and the Higher Regional Court of Frankfurt am Main rejected this application due to the lack of a basis for a claim under the UWG.
The decision of the OLG Frankfurt am Main
In summary, the Higher Regional Court of Frankfurt am Main clarified that provisions such as Sections 143 and 143a MarkenG do not constitute market behaviour regulations within the meaning of Section 3a UWG.
A market conduct rule is a statutory provision that at least also aims to regulate and protect behaviour on the market in the interests of market participants (Section 3a UWG). In this regard, the OLG Frankfurt am Main stated:
„A market conduct provision within the meaning of Section 3a UWG only exists if the provision is (at least) also intended to regulate market behaviour in the interests of market participants (within the meaning of Section 2 I No. 3). To this end, it must be related to competition in such a way that it protects the competitive interests of persons who are potential suppliers or purchasers of goods or services. It is sufficient that the standard is also intended to protect the interests of market participants, even if it primarily has the interests of the general public in mind. However, it is not sufficient that the provision merely has a reflex effect in favour of the market participants.“
The court emphasised that intellectual property law provides the trademark owner with an exclusive right of prosecution: only the trademark owner can take action against infringements, not any other market participant. This means that the enforcement of any claims arising from trade mark infringements also remains a private matter. A competitor cannot act „vicariously“ via the Unfair Competition Act.
However, the Higher Regional Court of Frankfurt am Main recognised that the applicant could certainly have asserted a claim for injunctive relief under Sections 8 (1), 3a UWG in conjunction with Sections 259, 260 StGB (commercial handling of stolen goods). The court clarified that it is recognised that receiving stolen goods – in contrast to money laundering pursuant to Section 261 StGB – is a rule of market conduct. The judgement states:
„Contrary to the applicant’s view, Section 261 StGB does not in fact constitute a rule of market behaviour. In this respect, the applicant refers to a parallel to receiving stolen goods, where it is recognised that it is a market conduct regulation, as the norm aims to protect the consumer and thus regulates market conduct (…). This is also convincing in the case of receiving stolen goods, as the protected legal interest in receiving stolen goods is the property of the victim of the previous offence (…) and the protective purpose in favour of consumers is based on the fact that it is not possible to acquire ownership of stolen or otherwise lost property). § Section 261 StGB, on the other hand, protects the domestic administration of justice in its task of eliminating the effects of criminal offences.“
However, the claim for injunctive relief based on receiving stolen goods failed due to the required predicate offence. The court stated:
„Insofar as the applicant in the complaint now wants to see the manufacture by a third party as a predicate offence and justifies this with the fact that „China“ is listed in the defendant’s offer, the manufacture in China cannot constitute an offence under the German Trademark Act due to the principle of territoriality – irrespective of the question of whether the applicant has thus made the factual circumstances of the manufacture sufficiently credible.
Conclusion
This decision consolidates the case law to the effect that exclusive rights such as trade marks or copyrights primarily serve to protect the rights holder and not to protect general market behaviour or equality of opportunity between competitors.
However, anyone who trades in „counterfeit“ items should – even if this is expressly pointed out – still expect to receive a warning under competition law, in which the accusation of receiving stolen goods within the meaning of Sections 259 and 260 of the German Criminal Code (StGB) is also raised.