Confectionery Industry Special

Transcription

Annual Review 2015
Confectionery Industry Special
Current case law on Intellectual Property and Competition Law, Media and
Entertainment Law, IT & Digital Business, as well as Commercial and
Distribution Law in Europe
Overview of Topics:
Intellectual Property / Competition Law
Media and Entertainment Law
“Sweet marks” – Current case law
Branded Content – What needs to be
at German and European level ................................................. 2
considered under German law ................................................ 26
Geographical indications of origin as marketing tool ............... 14
Trademark law reform in the EU – What
will be the changes in practice? .............................................. 18
How to fight copied sweets ..................................................... 20
Sweet victory: Lindt wins battle
IT & Digital Business
Guide to information obligations and
data protection at fan pages,
Like buttons & Co. in social media .......................................... 28
with Haribo over choc bears.................................................... 22
Warning on labeling of foodstuffs ............................................ 24
Commercial and Distribution Law
Confectionery sales: Compensation
claim of the authorized dealer ................................................. 30
Confectionery Industry Special Annual Review 2015
Entertainment Law, IT & Digital Business, as well as Commercial and Distribution Law in Europe
"Sweet marks” – Current case law at
German and European level
incorrect spelling of the word "extreme" contributes nothing to
the distinctive character. 5
Likewise, the European Court of First Instance recognized no
1. Judgments on registrability
distinctive character in the trademark "REHABILITATE." Rather, food supplements, energy drinks and confectioneries so
Not every sign is worthy of protection as a trademark. The magic word is "distinctive character." This means that only signs,
designated would promise to become fit again, so that the sign
is purely descriptive. 6
which are not immediately descriptive of the products deserve
trademark protection.
Likewise, distinctive character was denied for the word mark
"GOLDEN GREEN" for green teas, since it is only a laudatory
It should be noted that there are also trademarks, the registra-
designation. 7 The Board of Appeal also could not be swayed by
tion of which is inadmissible from the outset – for instance, if the
the fact that "GOLDEN GREEN" already enjoys trademark
sign contains a national emblem. This was the case with the
protection in other EU countries.
following sign, which contained a part of the Bavarian state
emblem.1
Trademark protection was, however, granted to the sign "ITALISSIMO," since the relevant public would not readily draw a
conclusion of a specific feature of the product from the trademark. 8
A review of the past year’s judgments shows that the tendency
1.2 Distinctive character of slogans
of the German and European Trade Mark Offices to apply a
In principle, the same standards as for other trademarks apply
rather stringent test has strengthened.
to the evaluation of the distinctive character of slogans. Designations, which are otherwise used as advertising slogans, indi-
1.1 Distinctive character of word marks
The Board of Appeal of the European Trade Mark Office (Office
for Harmonization in the Internal Market – OHIM) denied a distinctive character of Kellogg's trademark "CORN POPS."2 This
does not apply solely to the English-language area, since in the
German language the term "pop" has also been adopted in
connection with certain cereal products.
cations of quality or inducements to purchase, can nevertheless
be regarded by the consumer as trademarks. Case law has
defined criteria, as to when consumers see a trademark in a
slogan. This can be the case particularly when the designation
exists not only in a usual advertising message, but rather has a
certain originality or conciseness, requires a minimum level of
effort to interpret, or triggers a thought process in the target
public.
Also, trademark protection was denied to the word marks "EXTRA EASY" 3 and "EASYPIZZA," 4 since the signs merely provide an indication of how easy the foodstuffs are to produce.
The General Court of the European Union (GC) did not deem
the word mark or the slogan "2good" to be distinctive, since it
only described that the goods thus designated are especially
Lidl failed with its application "X-TREME SOUR" for ice cream.
The Board of Appeal of the EU Trade Mark Office determined
good. 9 In addition, the substitution of a word with a number in
times of "text message language" would not be uncommon.
that it is only a taste description of the product and also the
5
1
OHIM-Board of Appeal (BoA), 26.02.2015, R 1166/2014-1 – Alpenbauer
2
OHIM-BoA 23.07.2015, R 403/2014-1 – CORN POPS.
3
OHIM-BoA, 04.06.2015, R 3277/2014-2 – EXTRA EASY
4
OHIM-BoA, 28.05.2015, R 1892/2014-2 – EASYPIZZA.
OHIM-BoA, 12.01.2015, R 1242/2014-1 – X-TREME SOUR.
GC, 11.12.2014, T-712/13 – REHABILITATE.
7
OHIM-BoA, 21.11.2014, R 1718/2014-1 – GOLDEN GREEN.
8
OHIM Cancellation Division, 08/27/2015, 9888 C – ITALISSIMO.
9
GC, 25.09.2015, T-366/14 – 2good.
6
Page 2/31
The slogan "HEALTHY EXTRA" was deemed not to be distinctive by OHIM’s Board of Appeal, since both word parts had
merely a descriptive character in respect to food and drinks.10
This is the case particularly today where many foods are treated
with more and more additives and a low number of calories is
desired.
Both the German Federal Patent Court and the General Court of
the European Union denied trademark protection to the designation "BE HAPPY”.11 It is a readily understandable advertising
message, which encourages one to be happy, by buying or
1.3 Distinctive character of word and figurative marks
Last year’s case law shows that increasingly stringent standards
are applied to distinctive character. Where a few years ago the
addition of a graphic element of an otherwise descriptive designation still helped in obtaining trademark protection, today this
can no longer be said in this sweeping manner.
The following examples show that even unusual figurative components could not contribute to surmounting the hurdles to
registrability:
using the goods in question.
The figurative mark "pure FINE
SELECTION“ was deemed to be
Also, no distinctive character was granted to the slogan "I’M
merely descriptive of the purity of the
SLIMMING," since it would merely describe what one could
goods. 15 The relevant public would
achieve with the aid of the thus designated goods, namely to
assume that the foodstuff contained no
lose weight. 12
additives.
The EU trademark "Kornspitz. So schmeckt Österreich!"
The word and figurative mark "CLEAN
[Kornspitz. Taste of Austria!] was canceled at the request of a
FOOD" was also deemed to be de-
competitor. The owner of the trademark is the Austrian company
scriptive, since this is merely a refer-
Backaldrin, which – according to its own report – is the largest
ence to food or drinks, which are free
provider of baking mixes for Kornspitz products. The Board of
of preservatives and other additives. 16
Appeal of OHIM regards "Kornspitz" as a purely descriptive
The figurative elements of the sign
designation for a special bakery product, so that the slogan
would merely underscore the descrip-
"Kornspitz. So schmeckt Österreich!" may not be monopolized. 13
tive character.
The parties are also involved in a long-standing dispute in Austria over the trademark "Kornspitz," which up to now has been
decided to the disadvantage of Backaldrin.
Trademark protection was denied to the slogan "MAKE SOMETHING BEAUTIFUL". The slogan would only be understood to
the effect that an enjoyable and tasty meal could be prepared
from the foodstuffs. That the specific goods were not described
directly is irrelevant, since the relevant public is accustomed to
the fact that advertising slogans would frequently only provide
abstract information. 14
10
OHIM-BoA, 31.07.2015, R 3129/2014-2 – HEALTHY EXTRA.
Federal Patent Court, 12.05.2015, 26 W (pat) 35/13 – BE HAPPY; GC,
30.04.2015, T-707/13 and T-709/13 – BE HAPPY.
12
OHIM-BoA, 03.07.2015, R 205/2015-5 – I’M SLIMMING.
13
OHIM-BoA, 27.03.2015, R 2271/2013-4 – Kornspitz. So schmeckt Österreich!.
14
OHIM-BoA, 16.03.2015, R 2430/2014-4 – MAKE SOMETHING BEAUTIFUL.
11
15
16
OHIM-BoA, 09/23/2015, R 94/2015-1 – pure FINE SELECTION.
OHIM-BoA, 06/03/2015, R 3183/2014-4 – Clean Food.
Page 3/31
The word and figurative marks "HAR-
cially good quality of chocolate. 20 In connection with the added
MONY FOR BODY & SOUL“ with the
word "Chocolatier" and the image of a cocoa bean, the sign is
additives "Detox & Slim," and "Purify &
clearly descriptive.
Slim" as well as "Fit & Slim" were also
considered to be merely descriptive,
The German Federal
although the figurative components are
Patent Court regarded
highlighted and are colored. 17 The
the trademark
figurative elements would only repre-
"SCHLOSS SHOP
sent (medicinal) plants or herbs, which
HEIDELBERG" as not distinctive, since it merely represented a
would naturally provide for harmony
reference to the geographical location of the shop. 21 In addition,
and are logically contained in the
the origin of the goods was not designated, since it could only
goods concerned (teas, tea-like prod-
be concluded from the sign that the usual souvenir items can be
ucts, etc.), so that these would contrib-
acquired in a gift shop in the environment of the Heidelberg
ute nothing to a capability of constituting a trademark. The fig-
Castle. The silhouette of the castle only supported the descrip-
urative elements would merely strengthen the descriptive mes-
tive character. The Federal Patent Court expressly referred to
sage of the signs.
the fact that the same sign has already been registered as a
German (DE) trademark since 1997, leads to no different outcome.
The Board of Appeal of
the EU Trade Mark
If the word element of the sign is descriptive, in the specific case
Office regarded the
the word "kornspitz," which merely describes a wholewheat
bakery product with pointed ends, it does not suffice for the
trademark "Salzburg Patisserie" not to be capable of constituting
registration of "The Kornspitz Company" to highlight this ele-
a trademark, since the word part "Salzburg" is understood to be
ment in color. 18
merely a geographical indication of origin and would also be
The combination of words of different
understood as such specifically in the area of confectioneries. 22
languages did not suffice for registra-
Neither the addition of the crown nor of the other graphical
tion in the case of "LA MEXICANA
elements would change anything in this respect.
QUALITY FOODS."19 The Board of
Appeal of the EU Trade Mark Office deemed this sign on the
The sign "SELECTION"
contrary as descriptive, since the proximity to the known words
describes the identified
"Mexican" and "Mexico" would not escape the relevant English-
goods to the effect that
language target public. The graphic design did not change
they are of above-
anything in this respect, either.
average quality, which
would be selected due to their excellent properties. 23 Since stars
In another decision, the Board of Appeal as-
often also constitute a quality seal, the latter cannot lead to a
sumed that it is known to the relevant target
distinctive character of the sign.
public that the word "Chuao" stood for an espeAlso, Lidl lost before the General Court of the European Union
with its word and figurative mark "Deluxe." The European court
17
OHIM-BoA, 05/21/2015, R 2281/2014-1 – HARMONY FOR BODY & SOUL
Detox & Slim; R 2306/2014-1 – HARMONY FOR BODY & SOUL Purify &
Slim; R 2315/2014-1 – HARMONY FOR BODY & SOUL Fit & Slim.
18
OHIM-BoA, 03/27/2015, R 2270/2013-4 – The Kornspitz Company.
19
OHIM-BoA, 03/24/2015, R 2501/2014-5 – LA MEXICANA QUALITY
FOODS.
20
OHIM-BoA, 03/20/2015, R 2858/2014-5 – CHUAO CHOCOLATIER.
Federal Patent Court, 11.03.2015, 29 W (pat) 511/13 – Schloss Shop
Heidelberg.
22
OHIM-BoA, 31.10.2014, R 1756/2014-4 – Salzburg Patisserie.
23
OHIM-BoA, 12.01.2015, R 713/2014-4 – SELECTION.
21
Page 4/31
deemed the sign to be a description of
Upon submission of the British High
the quality of the goods and thus not to
Court of Justice, the European Court of
be distinctive.24 The graphic design,
Justice in September 2015 dealt in
the font, the silver color on a black
more detail with the requirements of
background, and the curved impression originating overall from
the registrability of trademarks consisting in a shape.27 Specifi-
the sign, emphasizes the laudatory and advertising character of
cally, it involved a long-standing dispute between Nestlé and
the trademark and, therefore, could not help in obtaining the
Cadbury regarding the registrability of the KitKat bar. A trade-
desired trademark protection.
mark, which consists exclusively of a shape, which is required to
achieve a technical effect, is excluded from trademark protec-
A word and figurative mark of Heng-
tion. In this regard, the European Court of Justice explained that
sterberg was deemed to be registrable,
this assessment refers solely to the functionality of the shape
however. 25 The slogan-like word ele-
and not to the production process of the shape. In addition, the
ment "Aus dem Guten das Beste" [The
court dealt with the question of the acquisition of a secondary
Best from the Good] is not distinctive
meaning and explained that the target public would have to see
per se. The addition of the year "seit
a trademark solely in the "bare" KitKat bar. The awareness of
1876" (since 1876), however, as well as the not marginal figura-
the word mark "KitKat" may not be consulted here. It now re-
tive element of an abstract and not precisely attributable land-
mains to be seen, how the British High Court decides on the
scape contribute to the capability of constituting a trademark.
capability of constituting a trademark of the KitKat bar.
The Board of Appeal stressed that the figurative elements do
not clearly and unambiguously represent that, which corre-
The General Court of the European Union regarded several
sponds to the word components.
trademarks consisting in a shape to be non-distinctive, which
represented smiling faces on circular or star-shaped forms.
Conclusion
If a word mark alone is not granted the necessary distinctive
character, it can help if a graphic design is added to the mark.
Consumers would be accustomed in the confectionery field to
such shapes, and would see nothing corresponding to a trademark therein. 28
Caution is required, however. The figurative components must
not only represent the content of the mark or have a purely
decorative effect, however. These principles were recently
affirmed by the European Trade Mark and Design Network
The distinctive character of a trademark
(TMDN). 26
in the shape of a dough bar for corn
chips and tortillas was also denied,
1.4 Distinctive character of marks consisting in a shape
since similar shapes could be acquired
The times in the beginnings of the Community Trade Mark Reg-
at any supermarket, and possible differ-
ulation, in which more or less every product shape was regis-
ences would not influence the overall
tered as a trademark, are long past. Now, courts are focused on
impression. 29
invalidation of these 3-D trademarks.
24
GC, 12/17/2014, T-344/14 – Deluxe.
OHIM-BoA, 11/26/2014, R 1749/2014-4 – Aus Guten das Beste seit 1876.
26
“Common Communication on the Common Practice of Distinctive character
– Figurative marks containing descriptive / non-distinctive words” of
02.10.2015, http://www.dpma.de/docs/marke/en-cp3cc.pdf .
25
27
28
29
ECJ, 09/16/2015, C-215/14 – Kit Kat.
GC, 10/07/2015, T-656/13, T-242/14, T-243/14, T-244/14.
GC, 06/29/2015, T- 618/14.
Page 5/31
Also, the "Knoppers" package was
deemed to be non-distinctive, since it
only represented a package customary
for confectioneries. The colors used
(white, light blue and grey) are not
extraordinary, either. Finally, the winding line running diagonally,
which is probably supposed to represent a snow-covered
mountain against a blue sky, would be considered by the
consumer only to be decorative elements. August Storck
pointed out that the same shape already enjoys trademark
protection in EU countries. This, however, failed to change the
Conclusion
The problem with marks consisting in a shape is that it is difficult
for consumers to determine a reference to the origin of the
product simply from the form of the product, i.e., to recognize
the form as a mark. This is due to the fact that threedimensional marks are not necessarily perceived in the same
way as word marks or figurative marks, which are independent
of their appearance. It is therefore necessary for registrability
that the form must significantly depart from the standard or
customs of the sector.
view of the Board of Appeal of the EU Trade Mark Office.30
On the other hand, OHIM’s Board of Appeal
deemed a special shape for ice cream to be
distinctive, since this shape differs substantially from the different basic shapes for ice
cream, which are common in the trade. 31 In
particular, it is unusual that a popsicle has so
many scoops.
30
31
OHIM-BoA, 09/08/2014, R 644/2014-5.
OHIM Cancellation Division, 23.02.2015, 9654 C.
Page 6/31
2. Conflicts between trademarks
In view of the average visual and above-average aural similarity,
likelihood of confusion was affirmed in the case of "TinTag" and
2.1 Likelihood of confusion of word marks
In the case of "IBIS" and "IBIS fresh," likelihood of confusion
was affirmed, since the word part "fresh" is insufficient to create
a counterbalance to the similarity, rather this word part is merely
secondary and descriptive. 32
Likelihood of confusion was affirmed for "NATURVAL" and
"Natür-bal," since the signs have a high degree of similarity
visually and aurally for the target public (the entire EU). 33
Due to the high typographical similarity, likelihood of confusion
between the trademark "LISAN" and the Lidl trademark
"FRISAN" was affirmed. 34
Likelihood of confusion also exists with respect to the trademarks "NATURALIA INGREDIENTS" and “NATURALIA", since
the latter is contained in the first trademark and the consumers
would consider the word part "Ingredients" merely as a secondary addition, which for example, could also only be a reference
to a sub-mark of the same company.35
Likelihood of confusion was also recognized for the trademark
"TIC TAC."38
Likelihood of confusion was denied for the word marks "STEVIOLA" and "Stevi-Cola."39 Partial identity of the goods would
exist, however, due to the different component "Cola" and the
low distinctive character of the earlier trademark (reference to
the sweetener Stevia) likelihood of confusion had to be rejected.
This is a rare and extremely welcome decision of an EU institution, in which a weak distinctive character of the earlier sign has
actually tipped the scales against likelihood of confusion.
Although the earlier trademark "ISSIMO" is completely contained in the later sign "YOGURTISSIMO," likelihood of confusion was denied. 40
Likewise, likelihood of confusion between the application
"Chiqqo" and the Intersnack trademark "CHIO" was denied,
since these are not only visually, but rather also aurally different. 41 This was apparent to the relevant target public in particular, since they are short words, in which small changes also
come to light more easily and since both words had no meaning
for the majority of the relevant target public.
2.2 Likelihood of confusion of complex trademarks
"STYX" and the Kaufland trademark "COOL STIX," since the
goods covered by the trademark application found to be similar
Trademarks, which in addition to a word component have a
were frequently ordered by the consumers orally or perceived
figurative component, are designated as word and figurative
acoustically (by radio advertising or verbal recommendations).36
marks or complex marks.
With regard to the goods "vegetable flavorings for drinks" (Class
Likelihood of confusion was affirmed for the word and figurative
30) likelihood of confusion of "FRUTTINA" and "FRUITINI" was
mark "TicTacDent – THE
affirmed despite the descriptive meaning of the common com-
EDUCATIONAL DENTAL
ponent "Fruit".
37
KIT" and the word mark "TIC
TAC" in particular due to a high phonetic similarity.42
32
33
34
35
36
37
OHIM-BoA, 07/06/2015, R 3086/2014-2 – IBIS FRESH.
OHIM-BoA, 06/16/2015, R 1158/2014-2 – Natür-bal.
OHIM-BoA, 13.05.2015, R 729/2014-4 – LISAN.
OHIM-BoA, 30.03.2015, R 1062/2014-2 – NATURALIA INGREDIENTS.
OHIM-BoA, 11.12.2014, R 2301/2013-1 and R207/2014-1 – STYX.
OHIM Cancellation Division, 07.10.2014, 3153 C – FRUITINI.
38
OHIM-BoA, 01.10.2014, R 1374/2013-4 – TinTag.
OHIM-BoA, 02.12.2014, R 54/2014-1 – STEVIOLA.
40
OHIM-BoA, 13.11. 2014, R 608/2014-1 – YOGURTISSIMO.
41
OHIM-BoA, 13.03.2015, R 830/2014-5 – Chiqqo.
42
OHIM-BoA, 24.09.2015, R 1902/2014-4 – TicTacDent – THE EDUCATIONAL DENTAL KIT.
39
Page 7/31
Likelihood of confusion was affirmed for
Aldi’s application "Gourmet" was denied
the trademark "GRANDMA’S Finest"
registration due to likelihood of confu-
and the Kraft Foods trademark
sion with an earlier Spanish trademark
"GRAND’MERE", since in addition to
"Gourmet" (on a red background). 47 And
the phonetic similarity the identical
this despite the existing weak distinctive
meaning of the word "Grandmother"
character of the term "Gourmet."
occurred. 43 It was assumed here that
the meaning of the English "Grandma"
In the case of "TIC TAC" versus "TIC-
is familiar to the relevant French target
TAC nens" the similarity of the signs was
public. In addition, both trademarks
affirmed, yet due to the dissimilar goods the OHIM denied likeli-
would depict a white-haired lady with
hood of confusion. 48 This even assuming a reputation of "TIC
glasses, which also would amount to a
TAC" on the part of the public.
similarity.
In the case of the August Storck
Likewise, likelihood of confusion was
trademark "MERCI" and the word and
affirmed for the word and figurative
figurative mark "MERCI DANK U
marks "Sama" and "Samia," particularly
DANKE" likelihood of confusion was
since both words are Arabic female
assumed not least due to the awareness of the trademark "Mer-
names. 44
ci."49 In addition, the word mark is fully contained visually in the
figurative trademark and the relevant public in Germany and
Benelux would merely see a repetition of the first word "Merci" in
As already in the word mark, likelihood
another language in the addition of "DANK U DANKE” [Thank
of confusion also exists in the word and
you].
figurative mark "NATURALIA INGREDIENTS" and the word mark "NAT-
Ehrmann was able to sustain its posi-
URALIA."45 The grapes added as an
tion with its figurative trademark of a
image did not change the fact that the
dinosaur, which holds a glass of milk in
attention is primarily directed at the
its hands, against an application, which
word elements. Even more than in the case of the word mark
depicts a similar dinosaur next to the
here the component "Ingredients" takes a backseat and is thus
word component "Dino". Likelihood of
only an accessory to the central word "Naturalia."
confusion was affirmed. 50
In particular, due to a phonetic similari-
Likewise, likelihood of confusion was
ty, likelihood of confusion between the
affirmed in the case of the Spanish
word and figurative mark “Marco” and
the Aldi trademark "MARKUS" was affirmed.
Cadbury trademark "GUMMY" and the
46
Kaufland trademark application
"GUMMY BEARS”. 51 The Board of
Appeal of the EU Trade Mark Office
assumed here that the relevant Span-
47
43
44
45
46
OHIM-BoA, 11.06.2015, R
OHIM-BoA, 18.05.2015, R
OHIM-BoA, 24.03.2015, R
OHIM-BoA, 16.03.2015, R
1936/2014-1, Grandma’s Finest.
606/2014-2 – Sama.
1386/2014-2 – NATURALIA INGREDIENTS.
2487/2013-4 – Marco.
48
49
50
51
OHIM-BoA, 24.02.2015, R 314/2014-4 – Gourmet.
OHIM-BoA 12.02.2015, R 1983/2013-4 – TIC-TAC-nens.
OHIM-BoA, 13.11.2014, R 549/2014-4 – MERCI DANK U DANKE.
OHIM-BoA 23.10.2014, R 2012/2013-5.
OHIM-BoA, 17.10.2014, R 2065/2013-5 – GUMMY BEARS.
Page 8/31
ish consumer did not know the word "Gummy" and therefore a
Haribo trademark "Stevi-Cola”. 56 The argument was the low
standard distinctive character had to be assumed.
degree of distinctive character of the earlier trademark due to
the reference to the sweetener "Stevia" as well as the concep-
Due to the dominant character of the word
tual and graphical differences of the trademarks.
"real" in the word and figurative marks
"real,- QUALITY" and "REAL HAND-
Also, likelihood of confusion was denied
COOKED" likelihood of confusion was
in the case of the word and figurative
assumed. 52 Both times this word element
marks "Kelly’s" and "Quely. 57 Although
was written significantly larger than the
OHIM’s Board of Appeal assumed a
respective additions "Quality" or "Hand-
strong phonetic similarity, in its view the
cooked". In addition, the word in each case
visual difference prevailed, since the
was at the beginning and thus would attract the attention of the
relevant target public would not as a rule
consumer to itself.
order the snacks and chocolate products
orally, but rather would find the products
Since the consumer would place greater
on the shelves while shopping, which is why a greater focus
attention on the beginning of the word than
should be placed on the visual elements.
on the end of the word, likelihood of confusion was assumed between the word mark
The German Federal Patent Court denied
"DeliDay" and the French word and figura-
the similarity of signs and thus likelihood
tive mark "deli‘ MAX”.
53
of confusion due to numerous and no-
In addition, the
word part "Deli" would not be a descriptive element, since the
ticeable differences of the star depictions.
relevant French target public would not understand this as an
It stressed that in particular no conceptual
abbreviation of the word "délicieux”.
similarity is given. Solely the possibility
that in two figuratively different illustra-
In the case of the Dallmayr trademark
tions the same motif is recognized and
"CAPSA" and the word and figurative mark
the trademarks could accordingly be
designated, is not yet sufficient. 58
"CUPSY" likelihood of confusion was
denied due to the lack of similarity of the
signs. 54
Likelihood of confusion between the word
2.3. Conflicts with trademarks acquired by use
and figurative mark "JELLYSHOT" and the
A Russian confectionery group, which is
Nestlé trademark "JELLYTOTS" was de-
extremely well-known in Russia with its
nied in particular due to the descriptive meaning of the common
product "MACKA", is attempting to de-
component "Jelly”. 55
fend itself against a trademark application "MACKA" of a competitor. Since the
As already in the case of the word mark,
Russian group has no trademark rights to
likelihood of confusion was denied for the
word and figurative mark "steviola" with the
"MACKA" in Europe, the opposition was
based on a trademark acquired solely through use. This is in
fact possible, insofar as the sign has acquired secondary meaning as a trademark within the relevant target public. The trade-
52
53
54
55
OHIM-BoA, 06.10.2014, R 842/2013-4 – REAL HANDCOOKED.
OHIM-BoA, 22.08.2014, R 1412/2013-4 and R 1641/2013-4 – DeliDay.
OHIM Cancellation Division, 01.10.2015, 9561 C – CUPSY.
OHIM-BoA, 16.03.2015, R 477/2014-4 – JELLYSHOT.
56
57
58
OHIM-BoA, 02.12.2014, R 34/2014-1 – steviola.
OHIM-BoA, 05.09.2014, R 2251/2013-1 – Kelly’s.
Federal Patent Court, 09/04/2014, 28 W (pat) 102/12.
Page 9/31
mark acquired by use would be the package of "MACKA" avail-
The dispute about the "Vichy" pattern was triggered by infringe-
able on the German market. In determining whether a sign has
ment proceedings based on an EU figurative trademark, which
been established solely by its use on the market, a special
shows the "Vichy" pattern. Andros, the owner of the "Vichy"
emphasis is placed on the determination of the relevant target
trademark, filed the action in France for an injunction against the
public. For the product "MACKA" the General Court of the Euro-
use of the Vichy pattern on lids for marmalade jars against
pean Union states that it must be examined whether the rele-
Gruppo Fini. The lawsuit was rejected by the
vant target public does not comprise the entirety of average
court in France, since a similarity of signs
Germans, but rather is limited to Russian speaking consumers
was denied. Gruppo Fini has launched a
in Germany.
59
That the relevant goods were primarily sold in
counter-attack and despite its victory in
stores, which would be frequented by Russian speaking con-
France has filed an application for invalida-
sumers and in addition the lettering on the package is Cyrillic,
tion of the European figurative trademark,
speaks in favor of this view. The Board of Appeal of the EU
which depicts the "Vichy" pattern. The appli-
Trade Mark Office had failed to conduct this examination.
cation was based on a trademark acquired
Therefore, the case has now been remanded. The Board of
solely through use, which shows a marma-
Appeal must now first examine, whether (1) the target public
lade jar with a lid in the "Vichy" pattern.
may be limited to Russian speaking consumers in Germany,
Therefore, the sign was the subject matter of
and (2) whether a secondary meaning is given in this area.
the infringement proceedings in France.
OHIM’s Board of Appeal ultimately did not decide as to whether
One dispute dealt with the registration
the marmalade jar has actually attained secondary meaning due
of a figurative trademark, which depicts
to an extensive use and thus could function as a prior right.
a yogurt bowl with small pieces and a
Instead the Board declared that even with the assumption of a
spoon. The opposition was also based
trademark acquired by use the latter would not be confusingly
here on a trademark acquired solely
similar to the figurative trademark "Vichy" pattern. Thus, the
through use. A prerequisite for this is
figurative trademark was not canceled.61
that the sign has acquired secondary
meaning within the relevant target
2.4 Conflicts with three-dimensional trademarks
public as a trademark. The trademark
Berlin Regional Court assumed
acquired by use is a package with the
likelihood of confusion in the case
mark "BeBe" and additional indications
of the ice cream of Nuna World
as well as the illustration of a yogurt
(illustration on the left), since the
bowl with small pieces and a spoon.
ice cream of the respondent also
Ultimately the Board of Appeal of the
EU Trade Mark Office did not examine,
whether the package of the opponent
has actually obtained trademark protection solely though an
extensive use. Rather, the Board stated that even with the as-
consisted of several squares strung
together with a pyramidal curvature. In this connection a at least
normal distinctiveness was attested to the sign of the applicant,
since the design deviates substantially from those usual ice
cream shapes. 62
sumption of a secondary meaning, the signs would not be confusingly similar. For the contested trademark on the package
(bowl with yogurt) would be used merely as an accessory to the
actual trademark and thus has an only descriptive and decorative character.60
59
60
GC, 28.10.2015, T-96/13 – MACKA.
OHIM-BoA, 26.05.2015, R 2295/2014-4 – Bowl with yogurt and spoon..
61
62
OHIM-BoA, 23.09.2014, R 931/2013-4.
Berlin Regional Court, 09.06.2015, 16 O 192/14.
Page 10/31
The Schogetten bar was successfully de-
2.5 Conflicts in product packaging
fended. Ludwig Schokolade has distributed a
Ferrero was able to successfully defend
chocolate bar since 1962 in the typical rec-
itself against the registration of a design,
tangular 100g package, however, in 18 indi-
which includes a transparent box with color-
vidual pieces. Ludwig Schokolade is both the
ful sugarcoated tablets. OHIM’s Board of
owner of a trademark in the shape of the
Appeal affirmed likelihood of confusion with
individual chocolate piece, as well as of a
the Ferrero trademark, which depicts the
trademark for the bar consisting of 18 pieces.
typical "Tic Tac Box”.64 The affixing of a
Cologne Higher Regional Court prohibited a
label with the mark "MIK MAKI" would not
competitor from distributing a 100 g bar,
be sufficient to eliminate likelihood of confu-
consisting of 18 individual pieces, which are
sion, since this does not dominate the over-
confusingly similar to the Schogetten piece,
all impression of the design.
as well as from advertising the chocolate
individual pieces in Germany. The fact that in the case of the
Schogetten piece, a star is located on the surface is irrelevant,
since the scope of protection of the trademark is related to the
three-dimensional shape of the chocolate piece as such.63
63
Cologne Higher Regional Court, 15.08.2014, 6 U 9/14 – Schokoladenstück
Baronetta.
64
OHIM-BoA, 08.09.2015, R 1150/2012-3.
Page 11/31
3. Proof of genuine use
depicted here with the inscription "Constanze Mozart Kugeln"
was recognized as use of the trademark "Constanze." Reber
Upon expiry of a certain period, marks can only be enforced if
submitted too little documentation for this package, which could
they are genuinely used. Upon the applicant's request, the
classify the use as genuine, however. Only four invoices were
holder of an older mark must provide proof that the mark is
submitted, which in a time period of eight months documented a
being genuinely used or that there are justified grounds for its
sales volume of only 19.8 kg to four customers in Germany with
lack of use.
a value of 428.10 EUR. The Board of Appeal emphasized that
not every use could be recognized as trademark use sufficient
The Cancellation Division of OHIM deemed
to preserve the right. Since here trademark protection for the
the use of the word mark "CANDYLAND" to be
entire EU had been claimed for the broad generic term "choco-
proven despite optical changes ("CANDY" and
late products" – and not only for chocolates – the small scale of
"LAND" were written in two lines, the whole
the use could not be recognized as sufficient to preserve the
was colored and surrounded by a dirigible),
right.
since the public would still recognize the word
mark therein. 65
Practical tip:
With regard to the requirements of proof of use, which is suffi-
For similar reasons the General Court of the
cient to preserve the right, the list of goods should also name
European Union recognized a use of the word
the specific products and in case of doubt proof of use should
mark "Drinkfit" in modified form, namely while
also only be established for this specific product.
the words "Drink" and "fit" are arranged one
below the other and are surrounded by a decorative semicircular label, as sufficient to preserve the right. 66
In the case of the word mark "EXPRESS YOURSELF" OHIM’s
Board of Appeal affirmed a use despite a graphic design, since
the added vertical line and the bold type of some letters are not
As already in the decision "WALZERTRAUM"67 the Board of Appeal of the EU
dominant or characteristic elements. 69
Trade Mark Office has now also rejected
genuine use of the trademark "CONSTANZE”. 68 Reber submitted a number of packages
A use of the word "real,-" with the addition
to establish proof of use. One box contained a
"QUALITY" was recognized as sufficient to
number of different chocolates, among others,
preserve the right of the word and figurative
one with the inscription "Constanze-Kugel”.
mark "real,-". Ultimately, however, the sign
The Board of Appeal could not regard this box
was canceled for a part of the products, since
with mixed balls as a proof of use. For on the
no documentation of use was submitted for all
front side the trademark "Constanze" did not
registered products.70
appear at all, but rather only the own mark
"Reber”. Only on the reverse side of the package, which showed a representation of the
different chocolates, did one come across the
reference "Constanze-Kugel”, which was
deemed as insufficient. Solely the package
65
OHIM Cancellation Division, 27.07.2015, 9584 C – CANDYLAND.
GC, 12.12.2014, T-105/13 – TrinkFix.
67
ECJ, 17.07.2014, C 141/13 P – Walzer Traum; see also Confectionery
Industry Special Year in Review 2014, p. 11.
68
OHIM-BoA, 30.04.2015, R 1994/2013-1 – Fournils de Constance.
66
69
70
OHIM Cancellation Division, 04/13/2015, 9149 C – EXPRESS YOURSELF.
OHIM-BoA, 03/16/2015, R 2285/2013-4 – REAL.
Page 12/31
No case of a genuine use existed in the
Likewise in the case of the word
case of "Sabores de Navarra”. 71 The origi-
and figurative mark "Frankonia
nally registered word and figurative mark
quadro" no genuine use could be
contained the addition "La Sabiduria del
proven. 72 This was justified by
Sabor" (= wisdom of taste). As a result of
the fact that the registered
the omission of this addition, the trademark
trademark would be dominated
was changed substantially in relation to its
by the word "Frankonia”. This
registered form, since "Sabores de Navar-
word, however, does not exist at
ra" (taste of Navarra) is merely descriptive.
all on the package and it can
scarcely be seen where the word
"Quadro" dominates.
Margret Knitter, LL.M.
[email protected]
71
GC, Urt. v. 21.01.2015, T-46/13 – Kit El Sabor de Navarra.
72
OHIM-BoA, 12/12/2014, R 535/2014-2 – FRANCONIA QUADRO.
Page 13/31
Geographical indications of origin as
a marketing tool
Our neighboring country, France, also shows what success
seals of quality can have. France provides an example of how
the marketing of regional specialties through the introduction
and defense of geographical indications of origin can be con-
Germany is a country with a multitude of traditional regional
ducted so that an outstanding quality concept has developed for
confectionery specialties, some of them world-famous such as
such protected products on the market. As a result, in the area
Lübecker Marzipan, Dresdner Stollen, Aachener Printen, and
of luxury items and foodstuffs French products are frequently
Nürnberger Lebkuchen, and other more local insider tips, such
significantly easier and more price-stable to market by their
as Bremer Kluten, Langenburger Wibele and Salzwedeler
producers and the region of origin is also generally positively
Baumkuchen.
perceived.
Exceedingly few of these are protected throughout the EU as
protected designation of origin, geographical indication or tradi-
1. European protection of "geographical
indications of origin"
tional speciality guaranteed, however. While Italy has currently
already protected 277, France 223 and Spain at least 184 prod-
The EU has recognized the potential of geographical indications
ucts, Germany is lagging far behind here with only 84 products,
of origin as an essential support of agricultural economy and of
of which only 10 are baked and confectionery products.1
regional marketing and included it as a regulatory subject in the
European agricultural policy (currently regulated in Regulation
Yet it is precisely such information as the geographical origin as
1151/2012). In this framework several quality marks were creat-
well as the methods of production and processing of agricultural
ed, in order to promote high-quality agricultural commodities
commodities and the traditional production of certain products,
and products as well as those with outstanding features, meth-
which are increasingly perceived by consumers as quality crite-
ods of production and preparation.
rion and provide a real competitive advantage. Consumers
prefer regional food products, and the corresponding labeling of
the products plays an important role in this. For instance, a
survey conducted in Baden-Württemberg by the marketing and
sales promotion company for agricultural and forestry products
from Baden-Württemberg (MBW) of 500 households in November 2011 revealed that 83% of those surveyed regard an official
seal of quality to be very important to important. 2
1
2
DOOR Database of the EU Commission
www.ernaehrung-bw.info
Page 14/31
1.1 The Protected Geographical Indication
1.2 The Protected Designation of Origin
Protected geographical indications guarantee on the European
Unlike in the case of the protected geographical indication, here
level that an agricultural product or a foodstuff originates from a
all steps of the production must occur in the region. Only then
certain area, a certain place or country and in which a certain
may an agricultural product or a foodstuff bear the mark as a
quality, the reputation or another property arises from this geo-
European protected indication of origin.
graphical area and was produced and/or processed and/or
prepared in a certain delimited area.
This guarantees that a product marked thus originates from a
certain area, a certain place or country, its quality and properties
Contrary to a common opinion, however, it is sufficient that one
are based precisely on the geographical conditions including the
of the producing or production steps occurs in this area. In the
natural and human influences and was produced, processed
case of processed foods, detailed product specifications are
and prepared in the specifically delimited geographical area.
indicated, which must be adhered to precisely by the producer
and the production of Stollen must occur in a precisely defined
Known examples are "Prosciutto di Parma”, "Camembert de
area in and around Dresden, whereas the ingredients do not
Normandie" and "Roquefort”. In Germany, such strict indica-
have to originate from the region.
tions of origin if anything play a niche role with a few products
like "Altenburger Ziegenkäse" or "Lüneburger Heidschnucken”.
There are currently no confectioneries, which are protected as
indications of origin, which may also frequently not be feasible
with regard to the abundance of ingredients. They are more
suitable for meat and dairy products.
Page 15/31
After registration, they protect product designations against
improper use for other products, for example, inferior similar
products, and against counterfeits. In the end, they also protect
the consumer, who can rely on the contents of the registered
indication of origin.
1.5 Right of use
The EU regulatory guidelines (in Regulation 1151/2012) provide
that whoever fulfills the product specifications coupled with the
1.3 The Traditional Specialty Guaranteed
use of the protected geographical indications of origin, automatically has a right (approval-free) of use, without older trademark
Finally, in the European system there still are traditional special-
rights being able to be invoked against the latter. Thus, in the
ties guaranteed. It does not come down to the regional origin of
regulation, the EU legislature expressly speaks in favor of the
commodities or products, however, but rather is supposed to
earlier priority trademarks not triggering a right of prohibition, but
guarantee the traditional ingredients or the traditional production
rather the trademarks taking a back seat to the provision of
methods of a commodity, for example, of "Mozzarella" or "Ser-
Regulation 1151/2012. Therefore, one should take care espe-
rano ham”. For Germany, no such products are currently pro-
cially in respect to the latter point and define one's protection
tected.3
strategy at an early stage. Wanting too much here, sometimes
means harming oneself.
1.4 The road to the registered indication of origin
The characteristic of geographical indications of origin is that in
contrast to trademarks they are not assigned to a specific per-
2. The geographical indication of origin as
a national protective right
son or a specific company, but rather that several profit as
beneficiary from the indications of origin.
Besides the aforesaid registered EU quality mark, the protection
also exists in Germany in the Trademark Act as a “geographical
In Germany, these applications must be filed at the German
indication of origin” for domestic and foreign products. Direct
Patent and Trade Mark Office (GPTO). A two-stage examination
protection is granted for the latter, without an examination by a
occurs initially by the GPTO, where applicable, involving the
public authority, registration in a register or other formalities
responsible federal and state ministries as well as other expert
occurring. The indication that a product originates from a certain
public authorities. After publication and expiry of an objection
geographical area is already protected, if this designation is not
period, the application is transmitted to the European Commis-
a generic designation. The protection is expanded if the prod-
sion.
ucts thus marked have special properties or a special quality
(qualified indications of origin) or the indication of origin enjoys a
The European Commission once again conducts an examina-
special reputation.
tion of its own, before the application is also published on the
European level. If no objections are filed after the expiry of a
In the meantime, however, the EU quality marks have a larger
certain period, the indication of origin is recorded in the register
significance due to their entry into the register.
at the European Commission as a protected indication of origin,
protected geographical indication or guaranteed traditional
specialty.
3
Federal Ministry of Food and Agriculture
Page 16/31
3. Protection of the geographical indications of origin by means of the collective
mark
4. Conclusion
The protection of geographical indications of origin is an important instrument to legally secure price stability by building
In order to complete the protection against misuse, the above-
consumer confidence. In particular, small and medium-sized
designated geographical indications of origin are additionally
manufacturers of traditional products can also profit substantial-
registered as collective marks, which can be done exclusively
ly from this. The legal measures, which are available for this,
by associations or legal entities under public law. Such associa-
are different and should be defined in advance and coordinated
tions are for the most part a merger of producers, municipalities
among the manufacturers. Whoever does this, secures competi-
and manufacturers of agricultural products and foodstuffs (for
tive advantages at an early stage.
example, Dresdner Stollen protective association, association of
Hessian fruit and fruit juice press houses for "Hessischer Apfelwein").
Markus von Fuchs, LL.M.
Dr. Ilja Czernik
[email protected]
[email protected]
Page 17/31
Trademark law reform in the EU –
What will be the changes in practice?
Clearer indication of goods and services
Up to now, all goods and services in a specific class could be
covered by mentioning the class headings of the Nice Classification. In the future, concrete terms of goods and services of
The Community trademark becomes the
EU trademark in 2016
the trademark must be indicated by the applicant, since only
those goods and services will be granted trademark protection
which correspond with the concrete terms. The holders of EU
The EU reform, however, entails not only this name change.
trademarks which list only class headings and have applied for
The reform package, upon which the Commission, the Europe-
trademark protection prior to June 22, 2012, have a six-month
an Parliament and the Council agreed in April 2015 and which is
grace period from the entry into force of the new provisions, in
currently before the Parliament for a decision, will effect far-
order to declare whether they want to adjust their list of goods
reaching changes in the trademark law of the European Union
an services by indicating the concrete terms.
and its Member States.
Better protection against trademark counterfeiting
The reform efforts trace back to the publication of reform proposals by the European Commission from the year 2013 and
deal, on the one hand, with the amendment of the "Directive to
approximate the laws of the Member States relating to trade
marks" (Directive 2008/95/EC) and the modernization of the
"Community Trade Mark Regulation of 1994" (Regulation No.
207/2009/EC).
The reform package provides for a multiplicity of measures. One
of the smallest changes is changing the name of the "Communi-
A further focus of the reform is better and more effective protection of companies against trademark counterfeiting. In order to
prevent the EU from continuing to be misused as a hub for the
worldwide trade of counterfeit products, the resources for combatting the counterfeiting of products are increased. In addition,
a procedure against preparatory acts to violate trademarks is
supposed to become easier and also goods can be stopped,
which should not come into circulation in the EU (transit goods).
Change in the fee structure
ty Trade Mark" to "European Union Trade Mark" and of the
"Office for Harmonization in the Internal Market" to the "Europe-
The new fee structure for the trademark application and renewal
an Union Intellectual Property Office”.
may be of special interest for trademark applicants. A trademark
application in three Nice classes previously amounted to 900
The following are among the most relevant reform proposals:
euros and the renewal to 1350 euros. The official basic fee and
the renewal fee are now each supposed to be reduced due to
Requirement of graphic representability is deleted
At present, a trademark can only be registered when a graphic
representation is possible. This requirement, especially for
unconventional trademark forms such as sound marks or marks
based on odors, frequently constituted an insurmountable obstacle for the application, which often led to a negative decision
in the application process. In the future, a trademark can already be registered when the trademark can be represented in
a reasonable form using generally accessible technology and
the representation is clear, precise, independent, easily accessible, understandable permanent and objective.
the reform to 850 euros. This fee will only cover one instead of
three classes, however. A further class is supposed to amount
to 50 euros and each additional class then will be an additional
150 euros.
With a view to the lower fees for the trademark renewal, a longterm saving of 30%-40% can be expected precisely for companies, which intend to protect a trademark for more than 10
years. Therefore, the EU trademark becomes cheaper in the
long term, even though it does not appear to be so at first
glance.
Page 18/31
An entry into force of the new regulation is expected at the end
The aforementioned innovations only constitute some important
of March/beginning of April in 2016. The regulation will have
aspects of the reform package. The reform will decisively ad-
direct effect immediately. The implementation of the new Di-
vance the harmonization of trademark law on the European
rective on a national level will still require some time, however.
level and provide trademark law in the area of legal harmoniza-
Also, the provisions concerning the elimination of the graphic
tion with a real pioneering function.
requirement only become relevant within 18 months after the
entry into force of the regulation, since additional acts of transposition will be required.
Silvia Meier
Stefan Schicker, LL.M.
[email protected]
[email protected]
Page 19/31
How to fight copied sweets
More than 37,000 visitors from the trade met last year with more
than 1,500 exhibitors at the ISM. Long-standing business relationships were maintained, very promising contacts made and
inspirations collected. But not all discoveries were positive, as
ny’s highest judges therefore denied both offering as well as
advertising, distribution or other placing on the market of the
goods with respect to domestic consumers, since a corresponding intention could not necessarily be deduced solely from the
presentation.
Deception of the specialist groups?
not all competitors rely on fair competition. And the corrupt gain
as is well known through counterfeiting. We have already out-
Whoever exhibits a counterfeit product at a specialist exhibition,
lined in our last year's newsletter how these plagiarists must be
advertises this, however, at least regularly to the international
confronted at exhibitions. There we had suggested the prelimi-
specialist audience attending the exhibition. This constitutes a
nary injunction as an effective means for combatting plagiarists
domestic use of the objectionable trademark or product form, 2
at exhibitions.
whereby an infringement and thus an injunctive relief is as a rule
given to the benefit of the manufacturer of the original products.
But the plagiarists are also learning. Increasingly, one now
This claim does not concern the offering, distribution, or placing
comes across foreign imitators, who place great value on want-
on the market, but especially in the confectionery business it
ing to exhibit in Germany at an exhibition, however, claiming
may be easy to get over, if indeed not the "offering" but the
that they would have no interest in the German market itself. If
compulsory upstream advertising is prohibited to a plagiarist.
the plagiarists act cleverly, then in the worst case solely the
presentation of the goods can be documented. Is this enough
This conclusion has an important snag, however. The criterion
for a successful proceeding against such an action, however?
for likelihood of confusion or deception is not the general public,
We provide an answer to this question:
but rather solely the expert exhibition visitor. And the latter
cannot be as easily deceived as an end consumer. It follows
Deception of the end consumer?
It may surprise some, but whoever exhibits counterfeit products
at an exhibition in Germany accessible only to a specialist audience, in the view of different German judges does not necessarily also offer these products on the German market. The
manufacturer of the Mikado-Keksstangen (cookie bars) had to
find this out painfully at the end of last year. 1
from this that the requirements of the existence of injury are
noticeably higher. But this is precisely where the above-outlined
cookie bar case failed. The Federal Court of Justice accepted
an advertising in respect to the specialist audience, however,
that this group was not deemed to make a misconception due to
the different packaging.
3
Collect, collect, collect
One plagiarist based in Turkey maintained a booth at the “ISM"
How close success and failure are to each other can be learned
It exhibited cookie bars there, which were nearly identical to the
as well from another case named the "Tuppex" decision.
well known Mikado cookie bars, but packaged differently and
labelled with the word mark "Biscolata." The manufacturer of the
The plagiarist also based in Turkey maintained a booth at the
originals, however, could only substantiate the presentation of
international Frankfurt specialist exhibition "Ambiente." There it
the cookie bars in the package. The manufacturer had no prov-
exhibited household containers under the mark "tuppex." Also,
able knowledge, however, that the plagiarist is also aiming at
the manufacturer of the "TUPPER" household containers could
the German market with its goods. The plagiarist, on the contra-
present – as previously DeBeukelaer – no direct proof that the
ry, defended itself that it had never intended to distribute the
plagiarist aims at the German market with its trademarks. It was
products in Germany and had aimed solely at the international
specialist audience in attendance with its presentation. Germa-
1
Federal Court of Justice GRUR 2015, 603 – Keksstange (cookie bars).
2
Federal Court of Justice GRUR 2010, 1103 – Pralinenform (chocolate mold)
II; Federal Court of Justice GRUR 2015, 603 – Keksstangen (cookie bars);
Frankfurt Higher Regional Court GRUR 2015, 903 – Tuppex.
3
Federal Court of Justice GRUR 2015, 603 – Keksstangen (cookie bars)
para. 36.
Page 20/31
able, however, to submit on behalf of a preliminary injunction an
Practical tip:
English language catalogue on display at the booth as well as
the self-presentation of the exhibition organizer, from which it
The burden of demonstration and proof of the individual infring-
results that the goods of the "Ambiente" are also offered for
ing acts lies with the manufacturer of the originals. .
purchase to the specialist audience.
 Therefore, collect and research all information already in the
These indications were enough for Frankfurt Higher Regional
preliminary stages, which can provide indications of acts of
Court to accept that with the advertisement an invitation is made
use (for example, of an offering, advertising, distribution or
at the same time to purchase the products in Germany. The
other placing on the market which is planned or has taken
Higher Regional Court accepted both a violation through "adver-
place).
tising" as well as through "offering." The manufacturer won.
 Also, at the exhibition the chances are quite good of exposing the plagiarist. Pay attention particularly to material on
display.
 Even without relevant information, the possibility still exists of
at least preventing the advertising of the plagiarist.
Dr. Magnus Hirsch
Christoph Mayerhöffer
[email protected]
[email protected]
Page 21/31
Sweet victory
Lindt wins battle with Haribo over choc
bears
public would confuse a word mark and a three-dimensional
product design. When comparing the marks, it did not have to
taken into account whether the shape of Haribo gummy bears
was similar to the shape of the "Lindt Teddy".
The Federal Court of Justice clarified that when comparing a
By their own admission, judges at the German Federal
word mark with a product design, similarity could only be given
Court of Justice entered unchartered legal territory in
in case of the same meaning or concept. Conceptual similarity
trademark law when issuing the decision in favor of Lindt
is given where the word mark is the most obvious, unforced and
and its Gold Teddy in a case brought by Haribo.1
exhaustive name for the three-dimensional shape from the
Swiss chocolate manufacturer Lindt & Sprüngli has sold the
relevant consumers' view. This is precisely what the Federal
"Lindt Teddy", a chocolate bear wrapped in golden foil with a red
Court of Justice did not consider as fulfilled in the case at issue.
ribbon around its neck and the "Lindt" logo on its stomach,
Not everyone would automatically say "gold bear" when refer-
during the Christmas season since 2011.
ring to the "Lindt Teddy" The judges held that the "Lindt Teddy"
could also be referred to as "Teddy", "Chocolate Bear" or
"Chocolate Teddy" by consumers. The "Lindt" or "Lindt Teddy"
logos and the inclusion in the "gold bunny" product range would
also argue against likelihood of confusion.
The Federal Court of Justice made it clear that conceptual similarity between a word mark and a product design would only be
given in exceptional cases, which in general would have to meet
German fruit gum producer Haribo, which is extremely well
known with its gummy bears that it has sold since the 1960s,
filed a legal challenge. Haribo had subsequently registered the
word marks "Gold Bear" and "Gold Bears" and now saw its
rights infringed by the "Lindt Teddy".
The legal dispute went through several instances. After Haribo
had prevailed at Regional Court level and the Higher Regional
Court subsequently decided in favor of Lindt in the second
instance, the German Federal Court of Justice now issued its
decision on 23 September 2015 (Case I ZR 105/14). In the
ruling, it followed the arguments set out by the Higher Regional
Court and denied any likelihood of confusion. Lindt may therefore officially keep the "Lindt Teddy" in its product range.
The judgment is of fundamental importance insofar as it is the
stringent requirements. Otherwise, there was a risk that through
conceptual similarity between a word mark and a threedimensional mark, goods could be monopolized by means of a
word mark.
Reference to the word mark "Gold Teddy", registered by the
gummy bear producer only after having become aware that the
"Lindt Teddy" was introduced, was inadmissible. The Federal
Court of Justice considered this to be an anti-competitive intention by Haribo.
Finally, the Federal Court of Justice denied Haribo's claims
under competition law. The "Lindt Teddy" was not an imitation of
Haribo's gold bear products. To this end, the products did not
resemble each other sufficiently.
Note
first Federal Court of Justice ruling on a cross-collision of a word
mark with a shape mark. The Court’s presiding judge stated that
In practice, the judgment means that, when introducing product
the proceedings had touched on "new legal ground in terms of
packaging, it must be examined if there is a word mark, which is
trademark law". It had to be assessed whether the relevant
the "obvious, unforced and exhaustive name of the threedimensional design". Only then, trademark infringement may be
1
BGH. 23/09/2015, I ZR 105/14
Page 22/31
given – a risk that exists only in absolutely clear-cut cases. The
Federal Court of Justice emphasized that a company may not
virtually monopolize certain product forms by means of a word
mark. It is supposed to be prevented that by registering a word
mark a manufacturer can obtain an exclusive right to sell confectionery products in a particular form, such as in the shape of
bears.
[email protected]
Page 23/31
Warning on the labeling of
foodstuffs, latest the labeling of the
tea "Felix Himbeer-Vanille
Abenteuer" (Felix Raspberry-Vanilla
Adventure) of the company
“Teekanne”1
Up to now it was recognized that consumers read the list of
The labeling of a product is one of the most important forms of
ingredients, if they make their decision to purchase dependent
marketing. The customer is supposed to receive information
upon the ingredients contained – thus a misleading of the con-
about the product through the package design and decide to
sumer could have been prevented by the illustrated list of ingre-
purchase the product. Creative and unique elements as illustra-
dients. Now the European Court of Justice has decided, howev-
tions and slogans are readily used for this purpose.
er, that the illustrated list of ingredients could not prevent a
misleading of the customer. Rather, the overall impression of
The labeling may not end in a misleading of the consumer,
the labeling is decisive.
however.
Whether the overall impression of the labeling produces a mis-
1. The "Felix Himbeer-Vanille Abenteuer"
leading had to be finally decided by the German Federal Court
of Justice. To determine the overall impression any detail pre-
This happened to Teekanne with its "Felix Himbeer-Vanille
sented on the package design has to be included. On Decem-
Abenteuer" tea. Raspberries and vanilla flowers illustrated on
ber 02, 2015 the German Federal Court of Justice decided, that
the package are supposed to indicate the flavors of the tea.
the consumer is misleaded, because the eye-catching information on the package design indicate the existence of vanilla
and raspberry ingredients. 2
2. Labeling – but how?
What does this mean for the limits of permitted labeling, however? When in particular does lawful labeling exist?
a) Mandatory details
A lawful labeling must without fail contain mandatory details.
The most important mandatory details result from the German
Such ingredients were, however, not contained in the tea according to the list of ingredients.
Food Labeling Directive (“LMKV” – Lebensmittelkennzeichnungsverordnung) and the Food Information Regulation (Regulation (EU) 1169/2011). The mandatory details include among
On June 04, 2015 the European Court of Justice decided that it
is misleading if ingredients were illustrated on a product, which
the product does not actually contain.
1
European Court of Justice, decision of 06/04/2015, C-194/14
other things the name under which the product is sold, the list of
ingredients, the sell-by date and in the case of confectioneries
the presence of glycyrrhizinic acid. In addition, the list of ingre2
BGH, Decision of 2/02/2015, I ZR 45/13
Page 24/31
dients must highlight allergens, for example, in bold type. The
In the case law, the individual case has to be considered.
minimum font size for mandatory details is 1.2 mm or 0.9 mm.
Therefore, a labeling cannot occur solely on the basis of one
decision issued. As already explained above, it was recognized,
b) Advertising with nutritional- and health-related details
Since the Health Claims Regulation (Regulation (EC)
1924/2006) special provisions apply to nutritional- and healthrelated details, which for advertising purposes are voluntarily
for example, before the decision of the European Court of Justice that consumers, who make their decision to purchase according to the ingredients, read the list of ingredients. In this
view the labeling of the tea would not have been misleading.
indicated on the package design. For example, terms such as
"sugar-free" or "low-fat" may only be used, if the products have
certain properties. Moreover, a nutritional table must be represented in a specific form (see Appendix XV of the Food Information Regulation).
Thus, the case law can only give indications for the assessment
of the suitability of the labeling to be regarded as deceptive.
With the final assessment it must always depend on the overall
impression of the labeling
c) No misleading of consumers
4. Conclusion
So far Teekanne has still correctly labeled its "Felix Himbeer-
The labeling must contain the mandatory ingredients. Further-
Vanille Abenteuer" tea. In addition to the provisions mentioned
more, it may not mislead the consumer. Whether there is a
the labeling of a foodstuff, however, may also not mislead the
misleading must be assessed on the basis of an average con-
consumer. This is regulated in Section 11(1) sentence 1 Ger-
sumer.
man Food and Feed Code (“LFGB” – Lebensmittel- und Futtermittelgesetzbuch) in conjunction with Art. 7 Food Information
After the new decision of the European Court of Justice on the
Regulation.
"Felix Himbeer-Vanille Abenteuer" special caution in this connection is advisable with respect to labeling, if reference should
A detail is misleading, if it produces the effect of an inaccurate
be made only to a flavor and the ingredient illustrated is not
detail and conveys an incorrect impression.
contained in the product.
3. Basis for the assessment of a misleading
Case law evaluates a misleading by means of the expectation of
the average consumer, to whom the advertising is directed, as
being one who is reasonably well informed and reasonably
situationally observant and circumspect. How this average
consumer will understand the details is decisive.
Yvonne Schäfer
On the basis of such an assessment the European Court of
[email protected]
Justice came to the conclusion in "Felix Himbeer-Vanille
Abenteuer" that the labeling is misleading because the ingredients illustrated were not contained in the product.
Page 25/31
Branded Content – Legal aspects
under German law
If a product or company is mentioned in an editorial environment
(i.e. objective and neutral appearing content) against payment,
such content will always be considered concealed advertising, if
the consumer does not recognize it as advertising. The advertis-
When the commercial comes on, the viewer turns the TV off. Ad
ing character can be made clear by placement of a label, such
blockers are becoming increasingly popular among internet
as "advertising" or "advertisement". But the content can also be
users and television viewers. The German courts so far approve
sufficiently identifiable as advertising, if a branding appears
of these business models referring to the negative freedom of
before viewing the content which indicates its commercial na-
information of the individual, i.e. the freedom to expose oneself
ture.
to as little advertising as possible. The solution of the advertising industry is branded content. Advertising that is not annoying,
Featuring a company or product within editorial content can be
but rather entertaining! But even the dream of entertaining ad-
permissible within narrow bounds. In general, there is nothing
vertising – a win-win situation for all parties concerned – can
wrong with featuring only one product; a principle of neutrality
rapidly shatter before German courts. The Unfair Competition
does not exist in this respect. The product or company may,
Act, the Interstate Broadcasting Treaty, the Telemedia Act and
however, not be promoted excessively in an advertising man-
the State Press Act may require a lebelling as advertising if the
ner. Excessive advertising may be indicated if a product is por-
advertising character would otherwise be concealed to the
trayed in a very positive but general way under use of soliciting
consumer.
language and without actually discussing and analyzing the
features of the product within a journalistic cause.
The purpose of all of these provisions is to protect the free
decision of the consumer in two respects: First, he should have
This problem is especially relevant at present in the context of
the opportunity to critically evaluate and question advertising,
YouTube vlogs (YouTube video blogs). Vloggers advance to
second to reject it. In the following we illustrate what should be
become YouTube-Stars and monetarize their videos by targeted
considered to prevent a violation of the prohibition of concealed
advertising or product placement. Thus, the advantages of a
advertising at the example of two very relevant means of brand-
specific lipstick are examined in a make-up tutorial or a specific
ed content:
game is being played in a gamer vlog. Based on the growing
significance of this form of advertising the state media authori-
1. Advertorials
ties have issued guidelines, which can be retrieved at the following link and outline very plainly the labeling requirements in
Advertorials constitute advertising embedded in editorial con-
particular as regards product placement:
tent. This can take place against payment, but also free of
http://www.die-medienanstalten.de/fileadmin/Download/
charge.
Publikationen/FAQ-Flyer_Werbung_Social_Media.pdf (unfortunately only available in German)..
Page 26/31
2. Viral Marketing
Even if the consumer recognizes the content as advertising after
viewing it, he should already be able to decide to not look at it at
Also, where branded content with advertising character is not
all. The links to such contents provided e.g. via the Like-button
embedded in an editorial environment, but rather, for example,
should therefore already indicate the commercial character. A
on the website of the advertising company itself, a labeling
sufficient indication can the mentioning of the trademark in a
should also occur. Image or advertising films are aimed at being
form making clear that it links to content of the respective com-
shared with other users on blogs or in the social networks.
pany.
Hanna Bickel, LL.M.
h.bickel @skwschwarz.de
[email protected]
Page 27/31
Entertainment Law, IT & Digital Business, as well as Commercial and Distribution Law in Europet
Guide to information obligations and
data protection for Fan pages, Like
Buttons & Co. in social media
In detail:
2.1 „Fanpages“
It is not conclusively clarified to what extent operators of commercial "Fan pages" are responsible for the data processing
The following contribution shows guidelines for the use of social
media as part of promotional measures. Here the focus should
be on compliance with general information obligations and data
protection, in which it should not be lost sight of that the use of
social media can also pose further problems, particularly under
the German unfair commercial practices laws. It should be noted that in this area some legal uncertainties still exist. The contribution therefore attempts to show an as legally secure as
possible way of dealing with the social media and indicates
currently existing dangers and legal uncertainties. These cannot
always be completely eliminated, if one does not want to dispense with an integration of social media in their entirety, which
at the present time is seriously considered for hardly any industry.
during the visit to the site by users. At present this is predominantly denied on the grounds that the operators of the "Fan
pages" are not responsible for the processing of data by the
social-media portal triggered by the visit. Thus, the data protection notices of the social-media portal itself are sufficient. The
use of "Fan pages" is therefore possible without great expense
and legal risks.
The situation is different, however, if the operator uses the
personal data obtained via the "fan page" in his own, independent manner (for example, as part of the organization of competitions). In this case, the way in which the data are used must of
course be completely disclosed in the data protection notices.
2.2 „Like-Buttons“
Depending on the kind of integration ("Fan page," "Like button,"
The integration of "Like buttons" (application/plugin for connect-
"Custom Audience") different problems arise.
ing the social media portal with one's own website, through
which contents can be directly shared on the portal, can clearly
1. Legal notice
be more problematic. Unlike in the case of "Fan pages" the
company participates directly in the data processing operation
Companies, which use "fan pages" (company websites, which
through the integration of plugins on its website. Thus, the user
are established on social-media portals), are obligated to pro-
also bears a joint responsibility for a possibly unlawful pro-
vide a complete legal notice with the information specified in
cessing.
Section 5 Telemedia Act. The information must be easily identifiable, immediately accessible and constantly available. Above
Such an unlawful processing already exists, if the way in which
all, the easy identifiability can cause problems, because a provi-
the personal data is handled is not comprehen-sively disclosed.
sion under the term "Info" (unlike under "Contact") should not
Due to the lack of transparency for which the portal operators
suffice, but some social media providers permit no other possi-
are responsible an appropriate disclosure is practically impossi-
bility of linking to the legal notice (Facebook, however, has
ble for companies at present. In the case of integration of "Like
recently changed this). If the provision occurs via a link, the
buttons" a certain danger of cease-and-desist warnings there-
content must be accessible with maximally two clicks.
fore exists. This danger can be reduced only by a comprehensive clarification in the data protection notices or explicit con-
2. 2. Data protection notice
sents of the user.
Reference can be made for the placement of data protection
2.3 „Custom Audiences“
notices to the above explanations. Additional problems result,
however, with regard to the legally valid design. Comprehensive
instruction is necessary on the way personal data are used.
"Custom audiences" allow companies to align their customer
data with the social-media portals and to filter out those, which
are members of these portals. This facilitates to contact existing
Page 28/31
Entertainment Law, IT & Digital Business, as well as Commercial and Distribution Law in Europet
customers via social-media. Here it should be noted that due to
Conclusion
the data processing a mandatory consent of the parties concerned must exist according to Section 4(1) Federal Data Pro-
The use of social media portals as promotional measures is
tection Act. Any such consent must specifically indicate which
extremely attractive and effective for companies. The legal
data are transmitted for what purpose to whom. Otherwise fines
requirements are often difficult to understand, however, and
or claims for damages are threatened.
even more difficult to satisfy. Therefore, companies are advised
to keep an eye on the legal problems and developments in
order not to run the risk of finding oneself exposed to ceaseand-desist warnings, fines or claims for damages.
Johannes Schäufele
[email protected]
Page 29/31
Commercial and Distribution Law
Confectionery sales: Compensation
claim of the distributor
that this feature must in any case exist as a rule.1 Manufacturers, who want to prevent the occurrence of a compensation
claim and attach no importance to learning customer identities,
should therefore design their contract such that no duty of the
Confectionery manufacturers frequently distribute their products
distributor arises from it to disclose customer identities. What if
via so called distributors, primarily in the distribution abroad.
the manufacturer would like to use the customer data in any
These are independent distribution companies, which purchase
case during the term of the distributorship agreement, for exam-
the goods in their own names and on their own account from the
ple, by direct mailing, however? Here the Federal Court of Jus-
manufacturer and resell them to their own customers.
tice has shown a way out.2 Accordingly, no compensation claim
is triggered, if the contract indeed provides for an obligation to
In the course of the cooperation the distributor builds a custom-
name the customers, however, the manufacturer is obligated to
er base. Frequently, a dispute occurs at the contract termination
delete and to discontinue using the customer data after the
as to whether the manufacturer has to pay compensation to the
contract termination.
distributor for the manufacturer being able to continue to supply
this customer base in the future, either in direct business or
Practical tip
through other distribution companies. Frequently, an amount
totaling an annual margin is claimed. It can therefore involve
Frequently manufacturers simply exclude the compensation
quite significant amounts.
claim for the commercial agent or distributor. This is always
invalid in respect to commercial agents operating in Europe,
If German law is to be applied to the distributorship agreement,
however, which is often unrecognized. In the case of distributors
such a claim can result from a corresponding application of
it must be differentiated where the latter is working. Depending
commercial agency law. Section 89b Commercial Code pro-
on site of operation such a regulation can be valid or invalid.
vides for a compensation claim for commercial agents.
Regulations concerning the amount of the compensation claim
are also problematic. These can be "partially invalid." This
The case law applies the standard accordingly to distributors.
means that the commercial agent or distributor can invoke the
This is the case, however, only if two conditions are satisfied:
regulation – if it is advantageous particularly to him – , while the
manufacturer cannot invoke it – if it were advantageous to him.
(1) On the one hand, the distributor must be intensively integrated into the sales organization of the manufacturer. Whether
this feature is satisfied, is determined by means of a number of
individual criteria. For example, instruction and control rights of
the manufacturer or storage and training obligations of the distributor thereby play a role. The overall view is decisive. (2) In
addition, the distributor must be required to transfer the customer base to the manufacturer. That means that an obligation must
Oliver Korte
arise from the contract, on the basis of which the distributor has
o.korte @skwschwarz.de
to provide the manufacturer with the essential customer data.
The claim frequently fails because of this feature. In the legal
literature it has long been disputed whether it is correct to require such a contractual obligation. It is asserted that a merely
de facto knowledge of the customers would have to suffice. For
also due to this de facto knowledge the manufacturer could
ultimately substitute himself for the previous distributor. The
Federal Court of Justice also decided again in 2015, however,
1
2
Two decisions dated 02/05/2015, Cases VII ZR 109/13 and VII ZR 315/13.
Decision dated 02/05/2015, Case VII ZR 315/13.
Page 30/31
Confectionery
Industry Special
Commercial and Distribution
Law
Annual Review 2015
Practice Group Industrial Property /
Impressum
Competition Law
1
Dr. Dorothee Altenburg
Hanna Bickel LL.M.
2, 7
Jens Borchardt LL.M.
1
Dr. Markus Brock
1
Dr. Ilja Czernik
Georg Delhaes
1
Markus von Fuchs LL.M.
Fabian Hartmann mag. jur.
Dr. Philipp Heigl LL.M.
Dr. Johann Heyde
1
Dr. Magnus Hirsch
Dr. Oliver Hornung
1
Margret Knitter LL.M.
6
Stefan Kridlo
Silvia Katharina Meier
Dr. Andreas Peschel-Mehner
Stephanie Pfaff
Marc Pussar
Yvonne Schäfer
1, 2, 3
Stefan C. Schicker LL.M.
Dr. Konstantin Wegner LL.M.
2
Dr. Hans Markus Wulf
SKW Schwarz Rechtsanwälte Wirtschaftsprüfer Partnerschaft mbB
Munich Local Court PR 884
Editorial Department: Margret Knitter LL.M.
Email: [email protected]
Offices
10719 Berlin
Neues Kranzler Eck/Kurfürstendamm 21
T +49 (0) 30.889 26 50-0
F +49 (0) 30.889 26 50-10
60598 Frankfurt/Main
Mörfelder Landstraße 117
T +49 (0) 69.63 00 01-0
F +49 (0) 69.63 55 22
40212 Düsseldorf
Steinstraße 1/Kö
T +49 (0) 221.82 89 59-0
F +49 (0) 221.82 89 59-60
80333 Munich
Wittelsbacherplatz 1
T +49 (0) 89.286 40-0
F +49 (0) 89.280 94-32
Practice Group IT & Digital Business
Friederike Behrends
2
Nikolaus Bertermann
2, 7
1
Dr. Markus Brock
2, 6
Dr. Oliver M. Bühr
1
Markus von Fuchs LL.M.
Dr. Philipp Heigl LL.M.
7
Florian Hensel
Dr. Johann Heyde
Dr. Oliver Hornung
Dr. Wulf Kamlah
René M. Kieselmann
5, 7
Dr. Eberhard Kromer MBA
Franziska Ladiges
Daniel Meßmer
Elisabeth Noltenius LL.M.
5
Dr. Matthias Nordmann M.A.
Dr. Matthias Orthwein LL.M.
2
Daniel Pfeifer
Sven Preiss LL.M.
Yvonne Schäfer
Johannes Schäufele
1, 2, 3
Stefan C. Schicker LL.M.
2
Jan Schneider
2
Martin Schweinoch
Benjamin Spies
2
Julian Westpfahl
2
Dr. Hans Markus Wulf
Practice Group Media and Entertainment Law
1
Dr. Dorothee Altenburg
Dr. Andreas Bareiss
Friederike Behrends
Hanna Bickel LL.M.
2
1
Dr. Ilja Czernik
Dr. Martin Diesbach
7
Dr. Ulrich Fuchs
Dr. Christoph Haesner M.C.L
Fabian Hartmann mag. jur.
7
Florian Hensel
Dr. Johann Heyde
1
Dr. Magnus Hirsch
Dr. Bernd Joch
Norbert Klingner
1
Margret Knitter LL.M.
6
Stefan Kridlo
5, 7
Dr. Eberhard Kromer MBA
Elisabeth Noltenius LL.M.
Sven Preiss LL.M.
Dr. Ulrich Reber
Johannes Schäufele
Prof. Dr. Mathias Schwarz
Pia Sökeland
Georg Wallraf
Dr. Konstantin Wegner LL.M.
20095 Hamburg
Ferdinandstraße 3
T +49 (0) 40.33 40 10
F +49 (0) 40.33 40 15 21
If you no longer wish to receive the Newsletter, please email us or notify your contact at our
firm.
We will also gladly inform you of our other Tickers and Newsletters.
Occupational title: Rechtsanwalt/-anwältin der BRD. Competent bar associations: Bar
Associations of Berlin, Düsseldorf, Frankfurt am Main, Hamburg, and Munich. The professional rules and regulations are available in German at http://www.brak.de by clicking on
"Berufsrecht" and scrolling down to "Informationspflichten" regarding the professional
informational obligations in accordance with Section 5 German Telemedia Act.
© SKW Schwarz 2016
Practice Group Commercial and Distribution Law
Marion Anzinger
Dr. Philipp Asbach
Dr. Michael Brauch
2, 6
Dr. Oliver M. Bühr
Klaus Kelwing
Stefanie von Knobloch
5
Oliver Korte
4, 5
Sabine Kröger
Christine Lingenfelser LL.M.
Caroline Lorenz
4
Dr. Ulrich Muth
Dr. Kolja Petrovicki LL.M. (UPenn)
Sven Pohl
Andreas Seidel
Dr. Jürgen Sparr LL.M.
5
Dr. Sebastian Graf von W allwitz LL.M.
5
Dr. Josef Zeller
1 Specialist Lawyer for IP Law
2 Specialist Lawyer for IT Law
3 also Solicitor in England und Wales
4 Specialist Lawyer for Banking Law and Capital Market Law
5 Specialist Lawyer for Commercial Law and Corporate Law
6 Lawyer and Civil Law Notary
7 Specialist Lawyer for Copyright and Media Law
Page 31/31

Confectionery Industry Special

Transcription

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