Caution when referring to Industrial Property Rights! The indication “Patent Pending” may be misleading.
In a recent decision, the Higher Regional Court of Munich ruled that the advertising statement “Patent Pending” can be misunderstood in Germany and is therefore be regarded as unfair competition (file no.: 6 U 3973 / 16). This also applies if the advertiser or associated third party is the holder of a patent application. German trade circles could infer from the English indication “pending” that there exists a patent in the sense of a granted patent.
It is well known that the patent examination proceedings can take a long time and that there is often a need for the applicant to draw attention to a special technical position of the product in relation to other products on the market before the patent is actually granted. This is all the more true since the applicant does not have to be unprotected until the patent is granted, but can be awarded appropriate compensation for the unauthorized use of the published invention pursuant to Sec. 33 German Patent Act. However, this requires that the user of the invention is acting in knowledge of the application, so that for this reason, too, the applicant has an interest in referring potential users of his invention to the disclosed patent application with a respective note.
However, caution is always required when using foreign-language information in the context of product marketing. Under German Unfair Competition Law, misleading commercial practices are inadmissible. In the case of advertising statements which can be understood in different ways, a misleading commercial practice is to be assumed already if a relevant part of the target public understands the statement in a way which does not correspond to the actual circumstances.
The advertising statement “Patent Pending” is widely used in English-speaking business to point out that no patent has yet been granted for an advertised product or parts thereof, but that such a patent has been applied for. From this practice, however, it must not be concluded hastily that also the German consumer understands the term in the same way.
This was the case in the decision made by the Higher Regional Court of Munich: The product packaging of an interdental cleaner contained the reference “Patent Pending” and a corresponding patent had been applied for but not yet granted. The court stated that the products marketed by the advertising company were aimed at the general public. However, only that part of the addressed public which has a detailed and in-depth knowledge of the English language or is already familiar with the subject of advertising with references to Industrial Property Rights would correctly understand the indication “patent pending” as an indication of a “only” pending patent application. This should however not be assumed for the wide mass of German consumers. “Patent pending” is not a term used in colloquial English. According to the court, a substantial part of the German public would be at risk of being misled, since the term “patent pending” is likely to be considered as to have the same meaning as the term “granted” patent. When stating “patent pending”, the German consumer will simply assume that a “patent” already exists which is described in more detail by the further foreign-language word “pending”.
The decision did not come as a surprise. Already in 1996, the Higher Regional Court of Düsseldorf had ruled in a similar case that the abbreviated statement “pat. pend.” is not correctly understood by German trade circles and can therefore be misleading. The ruling of the Higher Regional Court of Munich thus serves as a reminder that German consumers may not be expected to have in-depth knowledge of foreign languages and that there may be a liability risk in the case of advertising with foreign-language information. This applies in particular if the product advertising is directed at the general and thus broad public. If, on the other hand, the advertising is aimed exclusively at the specialist public who are familiar with English terms, this may be different. A less strict standard may apply in the case of a professional public.