Cheat packs repackaged!

The BGH decision of May 29, 2024, Ref. I ZR 43/23 - Misleading packaging in the online store

In a recent decision, the First Civil Senate of the Federal Court of Justice (BGH) once again had to deal with the question of when packaging that is not completely filled can be assumed to be a misleading packaging (“Mogelpackung”).

What was new here was the fact that the cheat pack in question was not on the shelf, but was offered in an online store.

The point of attack was the packaging of a wash gel for men from L'Oréal in the form of a plastic tube with a capacity of 100 ml. The shower gel was displayed standing on the cap in an online advertisement. The subject of the proceedings was therefore a photo of the packaging on the Internet.

The lower part of the cap is transparent so that the orange liquid content is visible. In contrast, the upper, tapered area of the tube up to the fold is silver-colored and opaque. The tube is actually only filled in the transparent area up to the beginning of the silver-colored upper part of the tube.

The Baden-Württemberg Consumer Advice Center took the view that this form of packaging constituted a misleading package that was inadmissible under unfair competition law, as it gave the consumer the impression that it was almost completely filled.

Contrary to the Düsseldorf Higher Regional Court (OLG Düsseldorf, 20 U 176/21) the BGH followed the plaintiff's opinion. Due to its design and filling, the product packaging gave the impression of a larger filling quantity than was actually contained. The internet advertising therefore violated Section 5 (1) and (2) No. 1 of the Act Against Unfair Competition (UWG).

According to the Federal Court of Justice, the relative filling quantity of a pre-packaged product is misleading under unfair competition law if the packaging of a product is not proportionate to the filling quantity it contains. This is certainly the case if the packaging is only about two thirds full, as in this case.

Nor does the packaging design prevent the false appearance of a larger filling quantity, nor is the filling quantity based on technical requirements.

In the opinion of the BGH, the misleading effect exists irrespective of the specific advertising medium complained of. In the opinion of the BGH and contrary to the assumption of the Düsseldorf Higher Regional Court, the misleading is also relevant if the customer cannot perceive the actual size of the product packaging at the time of dealing with the offer and purchasing the product, as it is an online advertisement.

This is because the protective purpose of Section 43 (2) Measurement and Calibration Law (MessEG) and Section 5 UWG to protect the public from misleading packaging is always affected, regardless of the distribution channel, if the shape and filling of a pre-packaged product is deceptive about its relative filling quantity.

Misleading packaging is, therefore, also prohibited if it is advertised on the internet or displayed in brochures, for example.

In this respect, the case law is in line with Art. 10 of the trilogue draft of the Packaging Regulation, according to which packaging with features that merely aim to increase the estimated volume of the product may not be placed on the market

The trilogue draft of the EU Packaging Regulation

On April 24, 2024, the European Parliament adopted the trilogue draft of the new EU Packaging and Packaging Waste Regulation (PPWR) by a large majority.

The Regulation on packaging and packaging waste is a proposal by the EU Commission from November 2022.

The background to the regulation is the second “EU Action Plan for the Circular Economy - For a cleaner and more competitive Europe”, which was adopted by the European Commission in March 2020 as part of the European Green Deal and aims to massively reduce packaging waste.

Directive 94/62/EC on packaging and packaging waste from 1994 currently applies in the EU, which leaves it up to the individual EU countries to take specific measures to reduce packaging waste. As a result, there are currently a large number of different requirements in Europe that companies have to take into account.

Unlike a directive, the new regulation will apply directly in all EU member states. It will therefore replace the Packaging Directive and probably also the German Packaging Act and establish significant new rules for the economy.

The exact dates of entry into force and date of application will be determined after the Council has also approved the new regulation. The regulation is expected to apply 12 months after its entry into force.

The key points of the EU packaging regulation

The main objectives of the new EU regulation are as follows:

• Packaging that comes into contact with food may no longer be placed on the market if it contains PFAS in a concentration that exceeds certain low guide values (Art. 5)
• Packaging must be recyclable (Art. 6); it is specified when packaging is considered recyclable (Art. 6).
• Plastic packaging must contain a certain minimum amount of recycled materials, which will increase again by 2040 (Art. 7)
• Labels attached to fruit and vegetables must be compostable (Art. 9)
• From January 1, 2030, certain single-use plastic packaging will be banned, e.g. for unprocessed fresh fruit and vegetables; for food and beverages filled and consumed in hospitality premises; for single portions of spices, sauces, cream or sugar in the hospitality sector; for cosmetics, hygiene and toiletries in the accommodation sector (Annex V)
• The weight and volume of the packaging must be kept as low as possible (Art. 10 para. 1)
• Packaging with features that are merely intended to increase the perceived volume of the product, for example through double walls, false bottoms or unnecessary layers (so-called cheat packaging) may not be placed on the market except in exceptional cases (Art. 10 Para. 2).
• Certain labelling, marking and information requirements apply (Chapter III)
• Suppliers of packaging must provide the producer with all information and documents to prove the conformity of the packaging (Art. 16)
• Per capita packaging waste is to be gradually reduced by 5% by 2030, by 10% by 2035 and by 15% by 2040 compared to packaging waste in 2018 (Art. 43)

Implications for trademark and design owners

Watch Out! The "wasteful" design of packaging with a larger volume than required may exceptionally be permissible if this design of the packaging is protected by a design right or a trademark (Art. 10 para. 2).

However, this exception only applies to design rights or trademarks that are already protected on the day the regulation comes into force. Moreover, it must be proven that a reduction of the packaging in accordance with the requirements of the Packaging Regulation would affect the trademark in such a way that its function as an indication of origin is affected. In the case of design rights, the exception requires that the reduction and modification of the packaging affects the novelty or distinctiveness of the packaging design.

In future, the design and layout of packaging will therefore have to be looked at much more closely. The extensive and detailed legal requirements of the new regulation on packaging and packaging waste must be observed. This also has direct implications for trademark and design applications in connection with product packaging.

We will be happy to advise you on the application and registration of your design and trademark rights and help you to successfully navigate your packaging designs through the maze of new legal requirements.