Cologne HRC: Polaroid . /. Fuji – No imitation through square instant images

In its judgement of 12.06.2020 (file no. 6 U 265/19), the Higher Regional Court of Cologne had to decide on the question of whether the “instax Square” instant images of the Fuji Group imitate the Polaroid instant images (“Type 600”) and deceive customers about the origin of the instant images or take advantage of the plaintiff’s good reputation.

Facts

The Polaroid Corporation introduced cameras for instant images type 600 in the early 1980s and has been the epitome of instant images ever since. The plaintiff now markets those instant images as the legal successor to the US Polaroid Corporation, which again went into insolvency in 2008. The plaintiff ‘s instant images have a white rectangular frame with equally wide left, right and top edges. The lower border, on the other hand, is approximately four times as wide as the other borders. The square picture measures 7.9 x 7.9 cm.

The defendant (Fuji Group) has been selling instant rectangular images (portrait and landscape) for approximately 20 years. Following the expiry of one of the plaintiff’s patents, the defendant has also been selling square instant images with a white border since 2017. The upper edge is approx. 50% wider than the lateral edges. The lower margin is also three times as wide as the side margins and thus twice as wide as the upper margin. Moreover, the picture measures only 6.2 x 6.2 cm and the lower two corners are slightly rounded, unlike the plaintiff’s product.

The Regional Court of Cologne dismissed the action. The plaintiff appealed against that decision.

Decision

The  Higher Regional Court of Cologne dismissed the appeal and justified its decision in particular on the grounds that the defendant’s square instant pictures do not imitate the plaintiff’s instant pictures and, moreover, do not mislead the consumer as to the origin of the goods in accordance with Paragraph 4(3)(a) of the UWG. Furthermore, the defendant would not take advantage of the plaintiff’s good reputation under Paragraph 4(3)(b) of the UWG.

The Higher Regional Court of Cologne limited the competitive originality of instant images to the specific design of the white borders and did not assume that instant images with white borders and a wider lower border per se have a competitive originality. Based on that assumption, the court logically concluded that there was no imitation. In particular, the court took the view that the ratio of the lateral margins to the upper and lower margins differed significantly between the two products. Furthermore, the products differ in size and the lower corners of the defendant’s product are rounded. Furthermore, the Higher Regional Court of Cologne denied that there was any deception and referred to the Hot-Sox case law of the Federal Court of Justice. According to this case law, it is sufficient that the products of the plaintiff and the defendant are each identified with their respective trademarks and that there is therefore no confusion on the part of the targeted public.

Moreover, the defendant’s products do not take advantage of the plaintiff’s reputation, since the defendant itself enjoys a good reputation on the market for instant images and therefore the targeted public does not attribute the reputation of the original product to the defendant’s trade mark because of the low degree of similarity and identification with the defendant’s trade mark.

Although the decision of the Higher Regional Court of Cologne does not reveal any new aspects in terms of competition law, it does clarify the interplay between competitive originality and imitation. In order to determine whether the contested design imitates the plaintiff’s product, it is always necessary to take into account the characteristics which give rise to the competitive originality. Even if, at first sight, the products appear to be quite similar, an imitation may be denied if the relevant characteristics which give rise to the competitive originality are different.

Carsten Plaga

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