05.11.2014 - Ausgabe: 5/2014

Forms of legal protection against plagiarism

By Dr. Fabian Ziegenaus LL.M., attorney, Noerr LLP and Philipp Roman Schröler, attorney, Noerr LLP

Every year, commercial organisations in Germany lose millions as a result of plagiarism, in other words, because of the marketing of forged copies or unauthorised reproductions of their products. In 2012 alone, the customs authorities confiscated items to the value of some €130 million because they represented possible violations of commercial rights . The need to provide legal protection of their products is thus becoming increasingly important for companies. This article is intended to provide an overview of the various forms of intellectual property rights and the strategies that can be adopted to prevent plagiarism.

Plagiarism is not only a problem with regard to the financial aspect but is also frequently associated with a considerable health risk to consumers. Many counterfeit products do not even conform to the relevant German safety standards so that the use of technical or mechanical equipment can result in serious injury. This aspect is of particular relevance in connection with products such as toys and play equipment because the target group consists mainly of (young) children. Accidents and the associated claims that can arise in connection with the use of plagiarised items can even have a negative impact on the image of the manufacturer of the original product. Companies thus need to ensure that suitable legal protection is in place for their products, concepts and innovations so that should someone actually employ these without authorisation or produce pirated versions they can enforce their rights under law.

When it comes to play equipment, there is a range of relevant laws that offer protection to the creator of a product.

Trademark law

Unlike the other laws intended to protect intellectual property, trademark law is not designed to safeguard a specific product or concept but only a distinguishing mark. The main factor here is the use of trademarks for the identification of products. Under trademark law, the right to a trademark can be registered or can also simply be created through its repeated use. With this law Trademarks are protected in many different forms. Trademarks are most commonly words or images, but three-dimensional items can also be registered as trademarks. There are other, less frequently encountered forms that trademarks can take, such as odours, sounds and colours. In exceptional circumstances, even a product itself can be granted the status of a trademark. For example, the basic Playmobil figure has been registered as a 3D trademark. On the other hand, the European Court of Justice has refused to extend similar trademark protection to the LEGO brick because its "shape is necessary to obtain a certain technical function" and other manufacturers cannot by rights be prevented from also making use of this function.
The purpose of trademarks is to prevent products being confused and thus the law specifies that trademarks that are identical or similar to those already registered cannot be used to identify products that are identical or similar to products already in circulation. Trademark protection can be granted for an unlimited period.
In the play equipment sector, violation of trademark rights could occur if a manufacturer uses the trademark (or a trademark that is similar to that) of another manufacturer on his products or markets unauthorised reproductions that are optically similar to the originals and even bear the (falsified) trademark of the manufacturer of the originals.

Design law

Two- and three-dimensional concepts that have a particular colour, form and structure can be registered as protected designs. But for an effective protection, a design must be novel and have specific individual characteristics; i.e. it must be different to existing designs and have a unique overall effect. Particular features that are alone due to technical requirements cannot be registered as protected designs.
Designs are protected once they have been entered in the corresponding register. Within the EU, design protection is also extended to so-called non-registered Community designs; this provides protection of the design for a period of 3 years from its being launched on the market. Registered Community designs are protected for a period of up to 25 years. It is an unexamined intellectual property right; this means that the authority does not review the legitimacy of protection at the time of registration of the design. The right to protection is only examined by the authority or a court if a dispute about the design arises with a third party.
Design law is of particular relevance to the prevention of unauthorised reproduction of toys and play equipment. By registering its design, the actual form of a toy or piece of equipment can be protected. Only the registered owner of the design is allowed to manufacture and distribute the relevant product design.

Copyright law

Copyright law is traditionally seen as the law designed to protect the interests of creative individuals. Copyright law protects works of literature, science and art. In order to qualify for copyright protection, a work must exhibit a certain degree of creative input by the originator and a specific minimum of individuality. However, the requirements with regard to creative effort, at least when it comes to items that fall within the category of fine art, are not particularly stringent. Copyright protection can even be granted in Germany for works that exhibit minimal creativity (known in German as kleine Münze or 'small change').
But a completely different outlook predominated in Germany for decades with regard to the sector we can describe as 'applied art'. This includes furniture and toy design. German courts were of the opinion that only those items that had features that extended far beyond those of everyday products and exhibited exceptional creative achievements were worthy of copyright protection. This was because the design of items of applied art could be registered for protection.
But the situation has recently changed. In view of the rulings of the European Court of Justice and a reform of German design law, the German Federal Court decided to revise its decades-old practices (decision of 13 November 2013, ref. I ZR 143/12). The decision concerned a wooden toy train bearing various birthday-related symbols. In future, it will no longer be necessary for courts to differentiate between works of applied art and works of fine art. The only criterion on which future decisions will be based will be the aesthetic effect of the design for which copyright protection is being claimed, assuming that this is not essential to the intended purpose or function of the item but takes the form of a creative achievement.
The advantages of copyright protection are obvious. No application or registration are necessary. Copyright protection arises automatically when a work is created. There are none of the costs associated with the registration of other rights when it comes to copyright. The long period of protection afforded by copyright should also be emphasized - in Germany, this extends for the lifetime of the creator and for 70 years after his/her death.
Yet there are risks associated with copyright protection. Copyright protection does not extend to ideas - protected is only the concrete and specific form of the work in question. The low barrier with regard to artistic input means that the range of protection provided is very limited. Even tiny changes to a design can mean that it is no longer protected by copyright. Because there is no official copyright register, problems can arise when it is necessary to prove authorship.

Patent and utility model law

Patent and utility model protection is provided for technical inventions that are innovative, creative and have potential commercial applications. An invention is innovative if it cannot be categorised as conforming to current technical standards. i.e. if it is not available to the public anywhere in the world at the time of being registered. When it comes to creativity, it is necessary that it should not be possible for a specialist in the field in question to derive the actual invention readily from the technology available. What the average specialist can achieve by manual modifications or simple improvements is not considered to be sufficient to warrant patent protection. Patent protection extends for 20 years from the date of registration of an invention while utility model protection extends for 10 years. When a patent expires, an invention can be freely used by anyone.
It is theoretically possible that all types of play equipment could be registered for patent protection. As a rule, however, it would not be the piece of equipment itself that would be patented, but specific technical elements of it. For example, there are registered patents for motors that drive toys, for the techniques used to create water fountains in water playgrounds and for specific spring mechanisms used in see-saws.

Defending rights in cases of violation

All the laws outlined above provide the owner of a product with a range of options should their rights be infringed by plagiarism. Principal among these are the right to require the offender to cease production and distribution, the right to information on the form and extent of the infringement and the right to claim for damages. In some cases, it is even possible to obtain a court injunction against an offender within just a few days by means of an accelerated procedure.

Another effective option is that of customs seizure. By submitting a formal application to the customs authorities, the holder of a particular right can stipulate that plagiarised items originating from abroad are to be confiscated and even destroyed directly at the border. It is advisable to first consult with a legal consultant specialised in the field of commercial rights with regard to what form the application should take and for what kind of companies and products a customs seizure order would be appropriate.

So that counterfeit items can be more rapidly identified as forgeries and an infringement of rights demonstrated, it may also be useful to systematically apply security markings or attach RFID chips to products. Apparently identical products that appear on the market but lack these features must then necessarily be forgeries. It is particularly important that commercial organisations are aware of the various ways in which they can legally protect their new products and innovations and also that they develop suitable strategies to defend themselves against product piracy. Those who fail to obtain legal protection for their products at an early stage will find that they have made it easier for counterfeiters and that they are no longer able to prohibit the sale of the counterfeit products.