How to Identify Plagiarism and Take Legal Action Against It

This article was written by lawyer Felix H. Kissner, an attorney at the law firm Barkhoff | Reimann | Vossius in Munich. Since January 2012, Mr. Kissner has advised clients in competition and trademark law, specializing in medical devices, health-claims regulation, and other special regulations in the fields of chemistry, medicine, and consumer products.

A competitor copies your product and sells it more cheaply — an annoyance that quickly becomes expensive. The good news: you are not defenseless against plagiarism. Whether or not you hold a registered design, the law offers several ways to act against imitations. What matters is knowing the right legal basis and moving quickly.

This guide explains which conditions must be met for a ban, the role your market knowledge plays, and why every day counts when a plagiarism appears.

A note on jurisdiction: the framework below reflects German and EU law. If you operate in another jurisdiction, the principles — registered design rights and unfair-competition protection — are broadly comparable, but the specific statutes and deadlines will differ. Check with local counsel.

A registered design gives you the strongest lever

The most effective protection against copies is a registered design. A right entered in the register is generally recognized by a court as legally valid and new. The consequence: on request, a plagiarism is automatically prohibited as an infringement.

The legal basis for this is

• in Germany, Section 42 of the Design Act (DesignG), and
• at European level, Article 19 of the Regulation on the Community Design.

In other words, registering your design early saves you a significant part of the evidentiary work if a dispute arises.

You can act even without a registered design

If you have not registered a design right, the case is not lost. Section 4 No. 3 of the German Act Against Unfair Competition (UWG) prohibits imitating a competitor's products where the imitator thereby "brings about an avoidable deception of customers as to the commercial origin" of the goods.

Case law requires three conditions for a ban:

1. Competitive distinctiveness — your product must serve a function of origin, meaning it recognizably points back to your company.
2. Recognition — your product must have achieved a certain level of recognition in the market.
3. Adoption of the overall impression — the other product must have taken over the overall impression of your design.

Important: competitive distinctiveness falls away if the relevant market already knows an older product that contains the essential features you are now selling as "novel."

Market knowledge and research decide the outcome

This calls for close coordination between client and lawyer. A court will affirm a claim for injunctive relief only if the comparable products it is shown differ significantly in design from yours. That requires the court to gain a genuine overview of the designs already on the market.

If you fail to provide that, the opposing side has an easy job: it can convince the court that the market is already familiar with shapes very similar to yours — and thereby deny your competitive distinctiveness.

The research begins with the products currently offered on the market. In many cases, that is already sufficient.

Nuances can decide everything

Experience shows that small details can tip the balance. One example: competitive distinctiveness was recognized in a case where the product was first presented on the US market and only afterwards offered in Germany. The fact that the competing product entered the German market at the same time did not change this. The reason: placing a plagiarism on the market must not weaken the claimant's legal position where the claimant had already presented the product to the public.

Conversely, competitive distinctiveness is denied where the market knows only a common design and the product is merely dressed up with a marketing idea.

Present your competitive distinctiveness clearly

Competitive distinctiveness is the most important hurdle on your side of the case. Once it is established, the court examines the next step: whether the plagiarism has actually adopted the essential features of your product and creates an overall impression by which it can be confused with yours.

In a "classic" plagiarism that copies your product one-to-one, the requirements are clearly met — and a court would impose a distribution ban.

With plagiarism, every day counts

Once you discover a plagiarism or imitation, you must act as quickly as possible. For provisional legal protection, case law has developed a one-month period between learning of the infringement and filing an application with the court (only a few courts are somewhat more generous). This is where the well-known interim injunctions originate — often the only court decision the parties ever see.

Within this month, the claimant must have

• already sent the opposing party a warning notice (Abmahnung), and
• given the opposing party the opportunity to respond within a reasonable period.

Frequently, the opposing side stops selling on the strength of the warning alone. This is often because its own supplier gave it incorrect information — or because the company did not carry out proper research before buying the goods or starting to sell them.

Conclusion

A registered design offers the strongest and fastest protection against copies. But even without a registered right, plagiarism can be fought through unfair-competition law — provided you can establish the competitive distinctiveness of your product and act within the one-month period. Thorough market research is not a side note here; it is often the decisive factor.

If you discover an imitation of your product, do not hesitate — we are glad to advise you.