Aren’t all gingerbreads equal?

It has long been known that not all gingerbreads are equal. But what if the packaging of one brand is deceptively similar to the packaging of another brand? This issue was considered by the District Court in Katowice in a case concerning the packaging of Gellwe’s gingerbread powder and its similarity to the packaging of Dr. Oetker’s gingerbread powder.

In the case at hand, Dr. Oetker, accusing Gellwe of an act of unfair competition under Article 3(1) of the Act on Combating Unfair Competition, demanded that its opponent:

• refrained from using in the course of trade, for gingerbread products, packaging in any form and of any weight, the front of which has a green background;
• refrained from using in the course of trade, for gingerbread products, packaging, in any form and of any weight, with elements typically associated with Dr.Oetker’s products (gingerbreads with white icing placed at the bottom of the composition, a manufacturer's mark on the left, etc.).

Product recognition

In support of its claim, Dr. Oetker claimed, inter alia, the reputation of its product, as evidenced by its existence since 2001 and the introduction of the product as early as 2006 in packaging very similar to that currently used.

Dr. Oetker also highlighted its significant market share in the gingerbread powder market, which by number of products sold was 100% in 2014, 77%, in 2015, 80%, in 2016, 68% in 2017, 69% in 2018 and 55% in the period from January to September 2020.

To prove the recognition of the product, the claimant also pointed out that every year its product is advertised both on television and in commercials displayed on the YouTube platform. In addition, between 2012 and 2020, the claimant advertised gingerbread powder in the mainstream press and in the trade press, and between 2015 and 2019 it conducted yearly advertising campaigns in large-format shops.

Comparing the packaging of its gingerbread powder to that of its competitor, Dr. Oetker pointed out numerous similarities, i.e.:

• green background of both packages;
• a graphic element showing a stack of gingerbreads decorated with white icing placed at the bottom of the composition;
• the manufacturer's mark on the upper left-hand side of the packaging;
• the name 'gingerbread' written in white across the top of the composition of the packaging;
• the image of a label showing additional information on a red background.

Securing the claims

The case is not resolved yet, but the Court granted the claimant security for its claims by prohibiting the use of the disputed packaging of Gellwe's gingerbread powder. It partially accepted the arguments put forward by the claimant and found that the compared products are similar to a sufficient extent to recognise that the Gellwe’s packaging evokes associations with the Dr. Oetker’s packaging. The court also agreed with the claimant that Dr. Oetker’s packaging may be recognised as renowned and thus is subject to protection under Article 3 of the Act on Combating Unfair Competition.

At the same time, the Court stressed that the provisions aimed at defending good merchant customs may not be used to eliminate competition and thus serve as a means for an entrepreneur to secure a monopolistic position on the market. For this reason, the Court refused to grant security for the claim for cessation of using in the course of trade, for a gingerbread product, packaging in any form and of any weight, the front wall of which has a green background, deeming that it may lead to the introduction of a monopoly. The Court justified this assessment by the fact that this colour is commonly associated with Christmas and has no distinctive character.

Copying of elements on the packaging

An important guideline for all entrepreneurs is the Court's conclusion that the similarity of packaging is determined primarily by the use of the same set, size, proportions and arrangement of graphic and verbal elements, and only this in combination with the use of an identical, in this case green, colour on the front of the product constitutes a parasitic act.

It is also worth noting that the preliminary injunction order issued in the case described above turned out to be only a prelude to a dispute between the owners of popular brands. The District Court in Katowice also secured Dr. Oetker’s claims concerning other Gellwe’s products including vanilla sugar, gelatine and cupcakes.

So we are in for another round of the popular packaging dispute. However, we wish all our readers to forget during Christmas about all the disputes, even the most passionate ones and those concerning the best gingerbreads!