Masterfoods gets double victory in unfair competition actions

The Cologne Regional Court has issued two decisions in favour of Masterfoods GmbH restraining the sale of pet foods in cans that were look-alikes of the packaging used by Masterfoods for pet food products.

In the first case, Masterfoods GmbH v Futternapf Tiernahrungshandels- und Vertriebs GmbH (Case 33 O 319/06, August 30 2006), the court granted an ex parte injunction in favour of Masterfoods against Futternapf Tiernahrungshandels- und Vertriebs GmbH (Futternapf) ordering it to refrain from offering, promoting and/or distributing in the course of trade for competitive purposes its cat food product, sold under the name Perfecto Cat. The interim injunction was granted without oral hearing due to the matter's urgency.

The court found that the get-up of Futternapf's Perfecto Cat product infringed Masterfoods' rights in the packaging of its Kitekat cat food product. It based its decision on the German Unfair Competition Act. The act states that look-alikes may be objected to if the original product incorporates competitively significant characteristics and the look-alike, by imitating the original product, leads the relevant public to be deceived as to the origin of the product and such deception is avoidable (Section 4(9) of the act). Supplementary protection against look-alikes is also provided if the look-alike exploits the reputation of the original product by referring to the qualities associated with the original product and the imitation of the product is deemed to be inappropriate (Section 4(9)(b)).

In this case, Futternapf's products imitated the original products' green background, the colour stripe on the top of the products indicating the different varieties and the image of a white-brown cat.

This case clearly shows that the supplementary protection provided under German law is still an effective remedy against look-alikes.

In the second case, Masterfoods GmbH v Dr Alder's Tiernahrung GmbH (Case 33 O 318/06, August 30 2006), the court granted an ex parte injunction in favour of Masterfoods against Dr Alder's Tiernahrung GmbH (Dr Alder's), the manufacturer of a dog food product sold under the name Goldy, ordering it to refrain from offering, promoting and/or distributing in the course of trade for competitive purposes dog food products showing a picture of a white West Highland Terrier (Westie). Masterfoods distributes dog food under the name Cesar in packages that are characterized by the picture of a white Westie for which Masterfoods enjoys trademark protection in Germany and the European Union.

The court's decision comes as no surprise since prior to the ruling in Germany, Masterfoods successfully defended its rights in the image of the white Westie in the Netherlands, where the Regional Court of Amsterdam ordered the company Yarrah Organic Petfood to refrain from using the picture of a Westie on its dog food packaging (Case KG 04/1926 MP). This shows that Masterfoods, due to the high degree of recognition of its white Westie, can successfully defend its rights in the packaging of its products bearing images of this breed of dog.

Matthias Koch, Freshfields Bruckhaus Deringer, Cologne