Trademark

infringement through

Competitors

6. March 2026

from

Clemens Pfitzer

Your competitor is selling products that obviously infringe third-party trademark rights and is thus gaining a price advantage. Can you sue him for injunctive relief under competition law? The Frankfurt am Main Higher Regional Court clearly says: No.

What is it all about?

Two companies are competitors in the field of merchandising products, specifically in the business with retro tin signs of well-known trademarks. The defendant was already subject to an earlier default judgment by the Regional Court of Frankfurt am Main, which had prohibited it from offering tin signs of numerous well-known trademarks (including Jack Daniel’s, Lufthansa, Haribo, Marlboro and many others) without sufficient notice.

Nevertheless, the defendant offered a tin sign via Amazon.de that almost exclusively showed Nestlé’s famous Maggi trademarks, including the Maggi lettering and the seasoning bottle protected as a 3D trademark. He added the following information to the offer, stating that the product was a “retro metal sign with historical representation as a decorative element”, that the trademark owner had not consented to the offer, that marketability was restricted and that the product could only be used for private purposes.

The applicant, i.e. the competitor, applied for an interim injunction. The defendant should no longer be allowed to offer the metal sign as long as Nestlé, as the trademark owner, had not given its consent. In the alternative, it demanded that the defendant should at least clearly indicate that its offer was unlawful and punishable. The Frankfurt am Main Regional Court rejected the application. The immediate appeal to the Higher Regional Court was also unsuccessful.

The decision

The OLG Frankfurt a.M. confirms the decision of the LG Frankfurt a.M. with Decision of 03.02.2026 – Ref. 6 W 165/25 and rejects all of the bases for claims put forward by the applicant. The reasoning is clear and of considerable importance in practice.

Trademark infringement is not a rule of market conduct.

The applicant’s central argument was that anyone who infringes third-party trademarks on a commercial basis is violating a statutory provision that also regulates market behavior and can therefore be sued for injunctive relief under competition law . The OLG takes a different view.

According to the Senate, the criminal provisions on commercial trademark infringement are not so-called market conduct regulations. Such regulations must at least also be intended to regulate conduct in competition in the interests of market participants. However, the criminal provisions under trademark law only protect the exclusive right of the trademark owner and not the equal opportunities of competitors.

In doing so, the court relies on the fundamental decision of the Federal Court of Justice, in which the same has already been established for copyright law. It must be left to the right holder to decide whether or not to take action against the infringement of his law. This decision-making power would be undermined if competitors were able to take independent action against trademark infringers on the basis of competition law.

The omission of the criminal complaint does not change this.

The applicant had argued that commercial trademark infringement was not subject to a criminal complaint requirement and that prosecution therefore no longer depended on the decision of the trademark owner. This would have to change the legal assessment. However, the OLG rejects this argument. The waiver of the requirement to file a criminal complaint is the case for many offenses, e.g. homicide, without this being indicative of a market conduct regulation. The waiver results solely from the seriousness of the offense, not from a changed protective purpose.

No fencing of own goods

The attempt to base the claim for injunctive relief on the criminal offense of commercial handling of stolen goods also fails. The problem here is that receiving stolen goods requires an unlawful predicate offense committed by a third party. In this case, however, it was the same defendant who offered the metal signs, but it is not possible to commit receiving stolen goods for one’s own goods if the trademark infringement and the offer coincide.

The applicant then attempted to construe the manufacture in China as a predicate offense committed by a third party. However, the court was not convinced by this either, as the principle of territoriality means that manufacture in China cannot constitute an offense under German trademark law.

No fraud through offer

A claim for injunctive relief on the grounds of fraud is also ruled out. The OLG does not see any deception, as the enclosed reference to the limited marketability and the restriction to private use means that the consumer is aware of the situation. In addition, the fraud offense does not protect the interest in not supporting a punishable transaction, but only the assets.

There is no money laundering market conduct rule.

Finally, the applicant raised the allegation of money laundering for the first time in the appeal proceedings. Here, too, the OLG denied a market conduct rule. While receiving stolen goods protects the assets of the predicate offender (and is therefore recognized as a rule of market conduct), the money laundering offence protects the domestic administration of justice. A competition-related protective function is not recognizable.

One reference is sufficient to prevent misleading information.

Finally, the court examined whether the defendant had created a misleading impression about the marketability of the metal sign. In doing so, the OLG left open whether an infringement of trademark law would impair marketability within the meaning of the UWG at all, since according to the prevailing opinion, this is not the case with infringements of intellectual property rights, as license agreements are possible at any time.

In any case, the defendant had sufficiently counteracted any misleading information by its reference in the offer. It informs the consumer that the trademark owner has not consented and that use is restricted to the private sphere. A further reference to the fact that the defendant’s offer itself is unlawful is not necessary, as this does not affect the consumer’s protected interest.

What does this mean in practice?

The decision has practical consequences for companies that are in competition with suppliers of trademark-infringing products.

• No UWG leverage against free riders under trademark law: Anyone who observes a competitor who gains a cost advantage by infringing third-party trademark rights cannot take action against this by means of competition law. The advantage through infringement within the meaning of the UWG does not apply here.
• Only the trademark owner can act: The court emphasizes that it must be left to the trademark owner alone to decide whether and how to take action against infringements. This power of disposition is part of the exclusive right under trademark law and cannot be circumvented by third-party claims under competition law.
• Criminal detours do not work: The attempt to construct a claim for injunctive relief based on criminal offenses such as receiving stolen goods, fraud or money laundering is practically futile after this decision.
• Notices can protect: For suppliers of products with limited marketability, the decision shows that a transparent reference to the lack of consent of the trademark owner and the restriction to private use can counteract misleading information.

Conclusion

We are happy to

advise you about

Competition law!

Contact form

Call now!