Smiley shape in frozen potato products as an indicator of business origin
The Higher Regional Court (OLG) of Düsseldorf ruled on 19.09.2023 (Case No.: I-20 U 33/24) that the characteristic smiley shape in frozen potato products can serve as an indicator of origin. According to the court, the specific design functions as a product design that enables consumers to associate the product with a particular company. This decision is particularly relevant for the design of product features in the field of competition law and trademark law.
Facts and main issues
In the underlying case, a supplier of frozen potato products with a smiley design faced claims under competition law from a competing company. The competing company was of the opinion that the specific design of the smiley potato products was already sufficiently associated with their own product line, so that use by third parties would be likely to obscure the business origin and mislead consumers.
The central issue in the court dispute was whether the smiley-shaped design is to be evaluated as a specific indicative origin function in terms of competition law and trademark protection and thus enjoys legal protection.
Assessment of the smiley shape as an indicator of origin
Distinctive character of product designs
The OLG Düsseldorf examined whether the disputed smiley shape has sufficient distinctive character. According to the Senate, the specific design of the face on the potato products conveys a formative, striking overall impression that clearly sets it apart from the usual appearance of comparable products. In particular, the court noted that the smiley shape in its present form – differing from simple designs of other suppliers – suggests a specific business origin.
Market acceptance and consumer perception
In addition, the OLG considered the documents submitted on market acceptance and consumer perception of the smiley design by the average consumer. It was found that the smiley shape has attained a high level of recognition in the relevant market segment and is associatively linked by the target audience to a specific company. Thus, there is an indication of origin within the meaning of § 4 No. 3 UWG and trademark protection.
Significance for the protection of three-dimensional designs
Extension of origin protection to product shapes
The ruling of the OLG Düsseldorf makes it clear that protection of business origin is not limited to classical word or image trademarks. The decision emphasizes that three-dimensional designs, as in the case of the smiley potato products, can be intended to develop a purely product-related, origin-indicative function. It is crucial that the form in question significantly exceeds the usual design features of the industry and has established itself in market perception.
Implications for sales law and product design
With its decision, the Higher Regional Court contributes another piece to clarify the protectability of product-related designs and thus the delineation of competition and trademark claims in the marketing of food products. For companies that value the uniqueness of their product aesthetics and the protection of their market presence, the ruling serves as a guide in handling competing products.
Note on existing legal remedies
It should be noted that court decisions can be subject to further legal remedies. If an appeal is lodged against the judgment, the presumption of innocence continues to apply in the context of an ongoing procedure. The contents presented here are based on publicly available sources at the present time (see https://urteile.news/OLG-Duesseldorf_I-20-U-3324_Smiley-Form-bei-tiefgekuehlten-Kartoffelprodukten-ist-herkunftshinweisend~N35560).
Conclusion
The decision of the OLG Düsseldorf underscores the importance of distinctive product design as an indication of business origin, especially in competitive sectors with standardized products. The question of the extent to which product forms enjoy trademark and competition law protection remains of great practical relevance.
For companies, investors, or brand owners pursuing individual questions about the protection of product designs or the defense against alleged imitations, an in-depth legal analysis of their rights and options is recommended. Further information can be found at Legal advice in IP law.
