confectionery industry special - 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:

Annual Review 2015

Intellectual Property / Competition Law

“Sweet marks” – Current case law

at German and European level ................................................. 2

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

with Haribo over choc bears.................................................... 22

Warning on labeling of foodstuffs ............................................ 24

Media and Entertainment Law

Branded Content – What needs to be

considered under German law ................................................ 26

IT & Digital Business

Guide to information obligations and

data protection at fan pages,

Like buttons & Co. in social media .......................................... 28

Commercial and Distribution Law

Confectionery sales: Compensation

claim of the authorized dealer ................................................. 30


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Confectionery Industry Special Annual Review 2015

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

"Sweet marks” – Current case law at

German and European level

1. Judgments on registrability

Not every sign is worthy of protection as a trademark. The mag-

ic word is "distinctive character." This means that only signs,

which are not immediately descriptive of the products deserve

trademark protection.

It should be noted that there are also trademarks, the registra-

tion of which is inadmissible from the outset – for instance, if the

sign contains a national emblem. This was the case with the

following sign, which contained a part of the Bavarian state

emblem.1

A review of the past year’s judgments shows that the tendency

of the German and European Trade Mark Offices to apply a

rather stringent test has strengthened.

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 dis-

tinctive 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.

Also, trademark protection was denied to the word marks "EX-

TRA EASY" 3 and "EASYPIZZA," 4 since the signs merely pro-

vide an indication of how easy the foodstuffs are to produce.

Lidl failed with its application "X-TREME SOUR" for ice cream.

The Board of Appeal of the EU Trade Mark Office determined

that it is only a taste description of the product and also the

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.

incorrect spelling of the word "extreme" contributes nothing to

the distinctive character.5

Likewise, the European Court of First Instance recognized no

distinctive character in the trademark "REHABILITATE." Ra-

ther, food supplements, energy drinks and confectioneries so

designated would promise to become fit again, so that the sign

is purely descriptive.6

Likewise, distinctive character was denied for the word mark

"GOLDEN GREEN" for green teas, since it is only a laudatory

designation.7 The Board of Appeal also could not be swayed by

the fact that "GOLDEN GREEN" already enjoys trademark

protection in other EU countries.

Trademark protection was, however, granted to the sign "ITAL-

ISSIMO," since the relevant public would not readily draw a

conclusion of a specific feature of the product from the trade-

mark.8

1.2 Distinctive character of slogans

In principle, the same standards as for other trademarks apply

to the evaluation of the distinctive character of slogans. Desig-

nations, which are otherwise used as advertising slogans, indi-

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.

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

good.9 In addition, the substitution of a word with a number in

times of "text message language" would not be uncommon.

5 OHIM-BoA, 12.01.2015, R 1242/2014-1 – X-TREME SOUR.

6 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.


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The slogan "HEALTHY EXTRA" was deemed not to be distinc-

tive 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 desig-

nation "BE HAPPY”.11 It is a readily understandable advertising

message, which encourages one to be happy, by buying or

using the goods in question.

Also, no distinctive character was granted to the slogan "I’M

SLIMMING," since it would merely describe what one could

achieve with the aid of the thus designated goods, namely to

lose weight.12

The EU trademark "Kornspitz. So schmeckt Österreich!"

[Kornspitz. Taste of Austria!] was canceled at the request of a

competitor. The owner of the trademark is the Austrian company

Backaldrin, which – according to its own report – is the largest

provider of baking mixes for Kornspitz products. The Board of

Appeal of OHIM regards "Kornspitz" as a purely descriptive

designation for a special bakery product, so that the slogan

"Kornspitz. So schmeckt Österreich!" may not be monopolized.13

The parties are also involved in a long-standing dispute in Aus-

tria over the trademark "Kornspitz," which up to now has been

decided to the disadvantage of Backaldrin.

Trademark protection was denied to the slogan "MAKE SOME-

THING 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. 11

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 Öster-reich!. 14

OHIM-BoA, 16.03.2015, R 2430/2014-4 – MAKE SOMETHING BEAUTI-FUL.

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 desig-

nation 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 com-

ponents could not contribute to surmounting the hurdles to

registrability:

The figurative mark "pure FINE

SELECTION“ was deemed to be

merely descriptive of the purity of the

goods.15 The relevant public would

assume that the foodstuff contained no

additives.

The word and figurative mark "CLEAN

FOOD" was also deemed to be de-

scriptive, since this is merely a refer-

ence to food or drinks, which are free

of preservatives and other additives.16

The figurative elements of the sign

would merely underscore the descrip-

tive character.

15

OHIM-BoA, 09/23/2015, R 94/2015-1 – pure FINE SELECTION. 16

OHIM-BoA, 06/03/2015, R 3183/2014-4 – Clean Food.


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The word and figurative marks "HAR-

MONY FOR BODY & SOUL“ with the

additives "Detox & Slim," and "Purify &

Slim" as well as "Fit & Slim" were also

considered to be merely descriptive,

although the figurative components are

highlighted and are colored.17 The

figurative elements would only repre-

sent (medicinal) plants or herbs, which

would naturally provide for harmony

and are logically contained in the

goods concerned (teas, tea-like prod-

ucts, etc.), so that these would contrib-

ute nothing to a capability of constituting a trademark. The fig-

urative elements would merely strengthen the descriptive mes-

sage of the signs.

If the word element of the sign is descriptive, in the specific case

the word "kornspitz," which merely describes a wholewheat

bakery product with pointed ends, it does not suffice for the

registration of "The Kornspitz Company" to highlight this ele-

ment in color.18

The combination of words of different

languages did not suffice for registra-

tion in the case of "LA MEXICANA

QUALITY FOODS."19 The Board of

Appeal of the EU Trade Mark Office deemed this sign on the

contrary as descriptive, since the proximity to the known words

"Mexican" and "Mexico" would not escape the relevant English-

language target public. The graphic design did not change

anything in this respect, either.

In another decision, the Board of Appeal as-

sumed that it is known to the relevant target

public that the word "Chuao" stood for an espe-

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.

cially good quality of chocolate.20 In connection with the added

word "Chocolatier" and the image of a cocoa bean, the sign is

clearly descriptive.

The German Federal

Patent Court regarded

the trademark

"SCHLOSS SHOP

HEIDELBERG" as not distinctive, since it merely represented a

reference to the geographical location of the shop.21 In addition,

the origin of the goods was not designated, since it could only

be concluded from the sign that the usual souvenir items can be

acquired in a gift shop in the environment of the Heidelberg

Castle. The silhouette of the castle only supported the descrip-

tive character. The Federal Patent Court expressly referred to

the fact that the same sign has already been registered as a

German (DE) trademark since 1997, leads to no different out-

come.

The Board of Appeal of

the EU Trade Mark

Office regarded the

trademark "Salzburg Patisserie" not to be capable of constituting

a trademark, since the word part "Salzburg" is understood to be

merely a geographical indication of origin and would also be

understood as such specifically in the area of confectioneries.22

Neither the addition of the crown nor of the other graphical

elements would change anything in this respect.

The sign "SELECTION"

describes the identified

goods to the effect that

they are of above-

average quality, which

would be selected due to their excellent properties.23 Since stars

often also constitute a quality seal, the latter cannot lead to a

distinctive character of the sign.

Also, Lidl lost before the General Court of the European Union

with its word and figurative mark "Deluxe." The European court

20

OHIM-BoA, 03/20/2015, R 2858/2014-5 – CHUAO CHOCOLATIER. 21

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.


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deemed the sign to be a description of

the quality of the goods and thus not to

be distinctive.24 The graphic design,

the font, the silver color on a black

background, and the curved impression originating overall from

the sign, emphasizes the laudatory and advertising character of

the trademark and, therefore, could not help in obtaining the

desired trademark protection.

A word and figurative mark of Heng-

sterberg was deemed to be registrable,

however.25 The slogan-like word ele-

ment "Aus dem Guten das Beste" [The

Best from the Good] is not distinctive

per se. The addition of the year "seit

1876" (since 1876), however, as well as the not marginal figura-

tive element of an abstract and not precisely attributable land-

scape contribute to the capability of constituting a trademark.

The Board of Appeal stressed that the figurative elements do

not clearly and unambiguously represent that, which corre-

sponds to the word components.

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.

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

(TMDN).26

1.4 Distinctive character of marks consisting in a shape

The times in the beginnings of the Community Trade Mark Reg-

ulation, in which more or less every product shape was regis-

tered as a trademark, are long past. Now, courts are focused on

invalidation of these 3-D trademarks.

24

GC, 12/17/2014, T-344/14 – Deluxe. 25

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 .

Upon submission of the British High

Court of Justice, the European Court of

Justice in September 2015 dealt in

more detail with the requirements of

the registrability of trademarks consisting in a shape.27 Specifi-

cally, it involved a long-standing dispute between Nestlé and

Cadbury regarding the registrability of the KitKat bar. A trade-

mark, which consists exclusively of a shape, which is required to

achieve a technical effect, is excluded from trademark protec-

tion. In this regard, the European Court of Justice explained that

this assessment refers solely to the functionality of the shape

and not to the production process of the shape. In addition, the

court dealt with the question of the acquisition of a secondary

meaning and explained that the target public would have to see

a trademark solely in the "bare" KitKat bar. The awareness of

the word mark "KitKat" may not be consulted here. It now re-

mains to be seen, how the British High Court decides on the

capability of constituting a trademark of the KitKat bar.

The General Court of the European Union regarded several

trademarks consisting in a shape to be non-distinctive, which

represented smiling faces on circular or star-shaped forms.

Consumers would be accustomed in the confectionery field to

such shapes, and would see nothing corresponding to a trade-

mark therein.28

The distinctive character of a trademark

in the shape of a dough bar for corn

chips and tortillas was also denied,

since similar shapes could be acquired

at any supermarket, and possible differ-

ences would not influence the overall

impression.29

27

ECJ, 09/16/2015, C-215/14 – Kit Kat. 28

GC, 10/07/2015, T-656/13, T-242/14, T-243/14, T-244/14. 29

GC, 06/29/2015, T- 618/14.


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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

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 substan-

tially 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

OHIM-BoA, 09/08/2014, R 644/2014-5. 31

OHIM Cancellation Division, 23.02.2015, 9654 C.

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 three-

dimensional 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.


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2. Conflicts between trademarks

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 trade-

marks "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 second-

ary 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

"STYX" and the Kaufland trademark "COOL STIX," since the

goods covered by the trademark application found to be similar

were frequently ordered by the consumers orally or perceived

acoustically (by radio advertising or verbal recommendations).36

With regard to the goods "vegetable flavorings for drinks" (Class

30) likelihood of confusion of "FRUTTINA" and "FRUITINI" was

affirmed despite the descriptive meaning of the common com-

ponent "Fruit".37

32

OHIM-BoA, 07/06/2015, R 3086/2014-2 – IBIS FRESH. 33

OHIM-BoA, 06/16/2015, R 1158/2014-2 – Natür-bal. 34

OHIM-BoA, 13.05.2015, R 729/2014-4 – LISAN. 35

OHIM-BoA, 30.03.2015, R 1062/2014-2 – NATURALIA INGREDIENTS. 36

OHIM-BoA, 11.12.2014, R 2301/2013-1 and R207/2014-1 – STYX. 37

OHIM Cancellation Division, 07.10.2014, 3153 C – FRUITINI.

In view of the average visual and above-average aural similarity,

likelihood of confusion was affirmed in the case of "TinTag" and

"TIC TAC."38

Likelihood of confusion was denied for the word marks "STEVI-

OLA" 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 institu-

tion, 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 con-

tained in the later sign "YOGURTISSIMO," likelihood of confu-

sion 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 differ-

ent.41 This was apparent to the relevant target public in particu-

lar, 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

Trademarks, which in addition to a word component have a

figurative component, are designated as word and figurative

marks or complex marks.

Likelihood of confusion was affirmed for the word and figurative

mark "TicTacDent – THE

EDUCATIONAL DENTAL

KIT" and the word mark "TIC

TAC" in particular due to a high phonetic similarity.42

38

OHIM-BoA, 01.10.2014, R 1374/2013-4 – TinTag. 39

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 EDUCA-TIONAL DENTAL KIT.


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Likelihood of confusion was affirmed for

the trademark "GRANDMA’S Finest"

and the Kraft Foods trademark

"GRAND’MERE", since in addition to

the phonetic similarity the identical

meaning of the word "Grandmother"

occurred.43 It was assumed here that

the meaning of the English "Grandma"

is familiar to the relevant French target

public. In addition, both trademarks

would depict a white-haired lady with

glasses, which also would amount to a

similarity.

Likewise, likelihood of confusion was

affirmed for the word and figurative

marks "Sama" and "Samia," particularly

since both words are Arabic female

names.44

As already in the word mark, likelihood

of confusion also exists in the word and

figurative mark "NATURALIA INGRE-

DIENTS" and the word mark "NAT-

URALIA."45 The grapes added as an

image did not change the fact that the

attention is primarily directed at the

word elements. Even more than in the case of the word mark

here the component "Ingredients" takes a backseat and is thus

only an accessory to the central word "Naturalia."

In particular, due to a phonetic similari-

ty, likelihood of confusion between the

word and figurative mark “Marco” and

the Aldi trademark "MARKUS" was affirmed.46

43

OHIM-BoA, 11.06.2015, R 1936/2014-1, Grandma’s Finest. 44

OHIM-BoA, 18.05.2015, R 606/2014-2 – Sama. 45

OHIM-BoA, 24.03.2015, R 1386/2014-2 – NATURALIA INGREDIENTS. 46

OHIM-BoA, 16.03.2015, R 2487/2013-4 – Marco.

Aldi’s application "Gourmet" was denied

registration due to likelihood of confu-

sion with an earlier Spanish trademark

"Gourmet" (on a red background).47 And

this despite the existing weak distinctive

character of the term "Gourmet."

In the case of "TIC TAC" versus "TIC-

TAC nens" the similarity of the signs was

affirmed, yet due to the dissimilar goods the OHIM denied likeli-

hood of confusion.48 This even assuming a reputation of "TIC

TAC" on the part of the public.

In the case of the August Storck

trademark "MERCI" and the word and

figurative mark "MERCI DANK U

DANKE" likelihood of confusion was

assumed not least due to the awareness of the trademark "Mer-

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

another language in the addition of "DANK U DANKE” [Thank

you].

Ehrmann was able to sustain its posi-

tion with its figurative trademark of a

dinosaur, which holds a glass of milk in

its hands, against an application, which

depicts a similar dinosaur next to the

word component "Dino". Likelihood of

confusion was affirmed.50

Likewise, likelihood of confusion was

affirmed in the case of the Spanish

Cadbury trademark "GUMMY" and the

Kaufland trademark application

"GUMMY BEARS”.51 The Board of

Appeal of the EU Trade Mark Office

assumed here that the relevant Span-

47

OHIM-BoA, 24.02.2015, R 314/2014-4 – Gourmet. 48

OHIM-BoA 12.02.2015, R 1983/2013-4 – TIC-TAC-nens. 49

OHIM-BoA, 13.11.2014, R 549/2014-4 – MERCI DANK U DANKE. 50

OHIM-BoA 23.10.2014, R 2012/2013-5. 51

OHIM-BoA, 17.10.2014, R 2065/2013-5 – GUMMY BEARS.


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ish consumer did not know the word "Gummy" and therefore a

standard distinctive character had to be assumed.

Due to the dominant character of the word

"real" in the word and figurative marks

"real,- QUALITY" and "REAL HAND-

COOKED" likelihood of confusion was

assumed.52 Both times this word element

was written significantly larger than the

respective additions "Quality" or "Hand-

cooked". In addition, the word in each case

was at the beginning and thus would attract the attention of the

consumer to itself.

Since the consumer would place greater

attention on the beginning of the word than

on the end of the word, likelihood of confu-

sion was assumed between the word mark

"DeliDay" and the French word and figura-

tive mark "deli‘ MAX”.53 In addition, the

word part "Deli" would not be a descriptive element, since the

relevant French target public would not understand this as an

abbreviation of the word "délicieux”.

In the case of the Dallmayr trademark

"CAPSA" and the word and figurative mark

"CUPSY" likelihood of confusion was

denied due to the lack of similarity of the

signs.54

Likelihood of confusion between the word

and figurative mark "JELLYSHOT" and the

Nestlé trademark "JELLYTOTS" was de-

nied in particular due to the descriptive meaning of the common

component "Jelly”.55

As already in the case of the word mark,

likelihood of confusion was denied for the

word and figurative mark "steviola" with the

52

OHIM-BoA, 06.10.2014, R 842/2013-4 – REAL HANDCOOKED. 53

OHIM-BoA, 22.08.2014, R 1412/2013-4 and R 1641/2013-4 – DeliDay. 54

OHIM Cancellation Division, 01.10.2015, 9561 C – CUPSY. 55

OHIM-BoA, 16.03.2015, R 477/2014-4 – JELLYSHOT.

Haribo trademark "Stevi-Cola”.56 The argument was the low

degree of distinctive character of the earlier trademark due to

the reference to the sweetener "Stevia" as well as the concep-

tual and graphical differences of the trademarks.

Also, likelihood of confusion was denied

in the case of the word and figurative

marks "Kelly’s" and "Quely.57 Although

OHIM’s Board of Appeal assumed a

strong phonetic similarity, in its view the

visual difference prevailed, since the

relevant target public would not as a rule

order the snacks and chocolate products

orally, but rather would find the products

on the shelves while shopping, which is why a greater focus

should be placed on the visual elements.

The German Federal Patent Court denied

the similarity of signs and thus likelihood

of confusion due to numerous and no-

ticeable differences of the star depictions.

It stressed that in particular no conceptual

similarity is given. Solely the possibility

that in two figuratively different illustra-

tions the same motif is recognized and

the trademarks could accordingly be

designated, is not yet sufficient.58

2.3. Conflicts with trademarks acquired by use

A Russian confectionery group, which is

extremely well-known in Russia with its

product "MACKA", is attempting to de-

fend itself against a trademark applica-

tion "MACKA" of a competitor. Since the

Russian group has no trademark rights to

"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 mean-

ing as a trademark within the relevant target public. The trade-

56

OHIM-BoA, 02.12.2014, R 34/2014-1 – steviola. 57

OHIM-BoA, 05.09.2014, R 2251/2013-1 – Kelly’s. 58

Federal Patent Court, 09/04/2014, 28 W (pat) 102/12.


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mark acquired by use would be the package of "MACKA" avail-

able on the German market. In determining whether a sign has

been established solely by its use on the market, a special

emphasis is placed on the determination of the relevant target

public. For the product "MACKA" the General Court of the Euro-

pean Union states that it must be examined whether the rele-

vant target public does not comprise the entirety of average

Germans, but rather is limited to Russian speaking consumers

in Germany.59 That the relevant goods were primarily sold in

stores, which would be frequented by Russian speaking con-

sumers and in addition the lettering on the package is Cyrillic,

speaks in favor of this view. The Board of Appeal of the EU

Trade Mark Office had failed to conduct this examination.

Therefore, the case has now been remanded. The Board of

Appeal must now first examine, whether (1) the target public

may be limited to Russian speaking consumers in Germany,

and (2) whether a secondary meaning is given in this area.

One dispute dealt with the registration

of a figurative trademark, which depicts

a yogurt bowl with small pieces and a

spoon. The opposition was also based

here on a trademark acquired solely

through use. A prerequisite for this is

that the sign has acquired secondary

meaning within the relevant target

public as a trademark. The trademark

acquired by use is a package with the

mark "BeBe" and additional indications

as well as the illustration of a yogurt

bowl with small pieces and a spoon.

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-

sumption of a secondary meaning, the signs would not be con-

fusingly 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 decora-

tive character.60

59

GC, 28.10.2015, T-96/13 – MACKA. 60

OHIM-BoA, 26.05.2015, R 2295/2014-4 – Bowl with yogurt and spoon..

The dispute about the "Vichy" pattern was triggered by infringe-

ment proceedings based on an EU figurative trademark, which

shows the "Vichy" pattern. Andros, the owner of the "Vichy"

trademark, filed the action in France for an injunction against the

use of the Vichy pattern on lids for marmalade jars against

Gruppo Fini. The lawsuit was rejected by the

court in France, since a similarity of signs

was denied. Gruppo Fini has launched a

counter-attack and despite its victory in

France has filed an application for invalida-

tion of the European figurative trademark,

which depicts the "Vichy" pattern. The appli-

cation was based on a trademark acquired

solely through use, which shows a marma-

lade jar with a lid in the "Vichy" pattern.

Therefore, the sign was the subject matter of

the infringement proceedings in France.

OHIM’s Board of Appeal ultimately did not decide as to whether

the marmalade jar has actually attained secondary meaning due

to an extensive use and thus could function as a prior right.

Instead the Board declared that even with the assumption of a

trademark acquired by use the latter would not be confusingly

similar to the figurative trademark "Vichy" pattern. Thus, the

figurative trademark was not canceled.61

2.4 Conflicts with three-dimensional trademarks

Berlin Regional Court assumed

likelihood of confusion in the case

of the ice cream of Nuna World

(illustration on the left), since the

ice cream of the respondent also

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

61

OHIM-BoA, 23.09.2014, R 931/2013-4. 62

Berlin Regional Court, 09.06.2015, 16 O 192/14.


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The Schogetten bar was successfully de-

fended. Ludwig Schokolade has distributed a

chocolate bar since 1962 in the typical rec-

tangular 100g package, however, in 18 indi-

vidual pieces. Ludwig Schokolade is both the

owner of a trademark in the shape of the

individual chocolate piece, as well as of a

trademark for the bar consisting of 18 pieces.

Cologne Higher Regional Court prohibited a

competitor from distributing a 100 g bar,

consisting of 18 individual pieces, which are

confusingly similar to the Schogetten piece,

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.

2.5 Conflicts in product packaging

Ferrero was able to successfully defend

itself against the registration of a design,

which includes a transparent box with color-

ful sugarcoated tablets. OHIM’s Board of

Appeal affirmed likelihood of confusion with

the Ferrero trademark, which depicts the

typical "Tic Tac Box”.64 The affixing of a

label with the mark "MIK MAKI" would not

be sufficient to eliminate likelihood of confu-

sion, since this does not dominate the over-

all impression of the design.

64

OHIM-BoA, 08.09.2015, R 1150/2012-3.


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3. Proof of genuine use

Upon expiry of a certain period, marks can only be enforced if

they are genuinely used. Upon the applicant's request, the

holder of an older mark must provide proof that the mark is

being genuinely used or that there are justified grounds for its

lack of use.

The Cancellation Division of OHIM deemed

the use of the word mark "CANDYLAND" to be

proven despite optical changes ("CANDY" and

"LAND" were written in two lines, the whole

was colored and surrounded by a dirigible),

since the public would still recognize the word

mark therein.65

For similar reasons the General Court of the

European Union recognized a use of the word

mark "Drinkfit" in modified form, namely while

the words "Drink" and "fit" are arranged one

below the other and are surrounded by a decorative semi-

circular label, as sufficient to preserve the right.66

As already in the decision "WALZER-

TRAUM"67 the Board of Appeal of the EU

Trade Mark Office has now also rejected

genuine use of the trademark "CONSTAN-

ZE”.68 Reber submitted a number of packages

to establish proof of use. One box contained a

number of different chocolates, among others,

one with the inscription "Constanze-Kugel”.

The Board of Appeal could not regard this box

with mixed balls as a proof of use. For on the

front side the trademark "Constanze" did not

appear at all, but rather only the own mark

"Reber”. Only on the reverse side of the pack-

age, 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. 66

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.

depicted here with the inscription "Constanze Mozart Kugeln"

was recognized as use of the trademark "Constanze." Reber

submitted too little documentation for this package, which could

classify the use as genuine, however. Only four invoices were

submitted, which in a time period of eight months documented a

sales volume of only 19.8 kg to four customers in Germany with

a value of 428.10 EUR. The Board of Appeal emphasized that

not every use could be recognized as trademark use sufficient

to preserve the right. Since here trademark protection for the

entire EU had been claimed for the broad generic term "choco-

late products" – and not only for chocolates – the small scale of

the use could not be recognized as sufficient to preserve the

right.

Practical tip:

With regard to the requirements of proof of use, which is suffi-

cient to preserve the right, the list of goods should also name

the specific products and in case of doubt proof of use should

also only be established for this specific product.

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

dominant or characteristic elements.69

A use of the word "real,-" with the addition

"QUALITY" was recognized as sufficient to

preserve the right of the word and figurative

mark "real,-". Ultimately, however, the sign

was canceled for a part of the products, since

no documentation of use was submitted for all

registered products.70

69

OHIM Cancellation Division, 04/13/2015, 9149 C – EXPRESS YOURSELF. 70

OHIM-BoA, 03/16/2015, R 2285/2013-4 – REAL.


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No case of a genuine use existed in the

case of "Sabores de Navarra”.71 The origi-

nally registered word and figurative mark

contained the addition "La Sabiduria del

Sabor" (= wisdom of taste). As a result of

the omission of this addition, the trademark

was changed substantially in relation to its

registered form, since "Sabores de Navar-

ra" (taste of Navarra) is merely descriptive.

71

GC, Urt. v. 21.01.2015, T-46/13 – Kit El Sabor de Navarra.

Likewise in the case of the word

and figurative mark "Frankonia

quadro" no genuine use could be

proven.72 This was justified by

the fact that the registered

trademark would be dominated

by the word "Frankonia”. This

word, however, does not exist at

all on the package and it can

scarcely be seen where the word

"Quadro" dominates.

72

OHIM-BoA, 12/12/2014, R 535/2014-2 – FRANCONIA QUADRO.

Margret Knitter, LL.M.

[email protected]


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Geographical indications of origin as

a marketing tool

Germany is a country with a multitude of traditional regional

confectionery specialties, some of them world-famous such as

Lübecker Marzipan, Dresdner Stollen, Aachener Printen, and

Nürnberger Lebkuchen, and other more local insider tips, such

as Bremer Kluten, Langenburger Wibele and Salzwedeler

Baumkuchen.

Exceedingly few of these are protected throughout the EU as

protected designation of origin, geographical indication or tradi-

tional speciality guaranteed, however. While Italy has currently

already protected 277, France 223 and Spain at least 184 prod-

ucts, Germany is lagging far behind here with only 84 products,

of which only 10 are baked and confectionery products.1

Yet it is precisely such information as the geographical origin as

well as the methods of production and processing of agricultural

commodities and the traditional production of certain products,

which are increasingly perceived by consumers as quality crite-

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 Novem-

ber 2011 revealed that 83% of those surveyed regard an official

seal of quality to be very important to important.2

1 DOOR Database of the EU Commission

2 www.ernaehrung-bw.info

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-

ducted so that an outstanding quality concept has developed for

such protected products on the market. As a result, in the area

of luxury items and foodstuffs French products are frequently

significantly easier and more price-stable to market by their

producers and the region of origin is also generally positively

perceived.

1. European protection of "geographical

indications of origin"

The EU has recognized the potential of geographical indications

of origin as an essential support of agricultural economy and of

regional marketing and included it as a regulatory subject in the

European agricultural policy (currently regulated in Regulation

1151/2012). In this framework several quality marks were creat-

ed, in order to promote high-quality agricultural commodities

and products as well as those with outstanding features, meth-

ods of production and preparation.


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1.1 The Protected Geographical Indication

Protected geographical indications guarantee on the European

level that an agricultural product or a foodstuff originates from a

certain area, a certain place or country and in which a certain

quality, the reputation or another property arises from this geo-

graphical area and was produced and/or processed and/or

prepared in a certain delimited area.

Contrary to a common opinion, however, it is sufficient that one

of the producing or production steps occurs in this area. In the

case of processed foods, detailed product specifications are

indicated, which must be adhered to precisely by the producer

and the production of Stollen must occur in a precisely defined

area in and around Dresden, whereas the ingredients do not

have to originate from the region.

1.2 The Protected Designation of Origin

Unlike in the case of the protected geographical indication, here

all steps of the production must occur in the region. Only then

may an agricultural product or a foodstuff bear the mark as a

European protected indication of origin.

This guarantees that a product marked thus originates from a

certain area, a certain place or country, its quality and properties

are based precisely on the geographical conditions including the

natural and human influences and was produced, processed

and prepared in the specifically delimited geographical area.

Known examples are "Prosciutto di Parma”, "Camembert de

Normandie" and "Roquefort”. In Germany, such strict indica-

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.


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1.3 The Traditional Specialty Guaranteed

Finally, in the European system there still are traditional special-

ties guaranteed. It does not come down to the regional origin of

commodities or products, however, but rather is supposed to

guarantee the traditional ingredients or the traditional production

methods of a commodity, for example, of "Mozzarella" or "Ser-

rano ham”. For Germany, no such products are currently pro-

tected.3

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-

son or a specific company, but rather that several profit as

beneficiary from the indications of origin.

In Germany, these applications must be filed at the German

Patent and Trade Mark Office (GPTO). A two-stage examination

occurs initially by the GPTO, where applicable, involving the

responsible federal and state ministries as well as other expert

public authorities. After publication and expiry of an objection

period, the application is transmitted to the European Commis-

sion.

The European Commission once again conducts an examina-

tion of its own, before the application is also published on the

European level. If no objections are filed after the expiry of a

certain period, the indication of origin is recorded in 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

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

use of the protected geographical indications of origin, automat-

ically has a right (approval-free) of use, without older trademark

rights being able to be invoked against the latter. Thus, in the

regulation, the EU legislature expressly speaks in favor of the

earlier priority trademarks not triggering a right of prohibition, but

rather the trademarks taking a back seat to the provision of

Regulation 1151/2012. Therefore, one should take care espe-

cially in respect to the latter point and define one's protection

strategy at an early stage. Wanting too much here, sometimes

means harming oneself.

2. The geographical indication of origin as

a national protective right

Besides the aforesaid registered EU quality mark, the protection

also exists in Germany in the Trademark Act as a “geographical

indication of origin” for domestic and foreign products. Direct

protection is granted for the latter, without an examination by a

public authority, registration in a register or other formalities

occurring. The indication that a product originates from a certain

geographical area is already protected, if this designation is not

a generic designation. The protection is expanded if the prod-

ucts thus marked have special properties or a special quality

(qualified indications of origin) or the indication of origin enjoys a

special reputation.

In the meantime, however, the EU quality marks have a larger

significance due to their entry into the register.


/31




3. Protection of the geographical indica-

tions of origin by means of the collective mark

In order to complete the protection against misuse, the above-

designated geographical indications of origin are additionally

registered as collective marks, which can be done exclusively

by associations or legal entities under public law. Such associa-

tions are for the most part a merger of producers, municipalities

and manufacturers of agricultural products and foodstuffs (for

example, Dresdner Stollen protective association, association of

Hessian fruit and fruit juice press houses for "Hessischer Apfel-

wein").

4. Conclusion

The protection of geographical indications of origin is an im-

portant instrument to legally secure price stability by building

consumer confidence. In particular, small and medium-sized

manufacturers of traditional products can also profit substantial-

ly from this. The legal measures, which are available for this,

are different and should be defined in advance and coordinated

among the manufacturers. Whoever does this, secures competi-

tive advantages at an early stage.

Markus von Fuchs, LL.M.

[email protected]

Dr. Ilja Czernik

[email protected]


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Trademark law reform in the EU –

What will be the changes in practice?

The Community trademark becomes the EU trademark in 2016

The EU reform, however, entails not only this name change.

The reform package, upon which the Commission, the Europe-

an Parliament and the Council agreed in April 2015 and which is

currently before the Parliament for a decision, will effect far-

reaching changes in the trademark law of the European Union

and its Member States.

The reform efforts trace back to the publication of reform pro-

posals 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-

ty Trade Mark" to "European Union Trade Mark" and of the

"Office for Harmonization in the Internal Market" to the "Europe-

an Union Intellectual Property Office”.

The following are among the most relevant reform proposals:

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 ob-

stacle for the application, which often led to a negative decision

in the application process. In the future, a trademark can al-

ready be registered when the trademark can be represented in

a reasonable form using generally accessible technology and

the representation is clear, precise, independent, easily acces-

sible, understandable permanent and objective.

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 Classifi-

cation. In the future, concrete terms of goods and services of

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

trademarks which list only class headings and have applied for

trademark protection prior to June 22, 2012, have a six-month

grace period from the entry into force of the new provisions, in

order to declare whether they want to adjust their list of goods

an services by indicating the concrete terms.

Better protection against trademark counterfeiting

A further focus of the reform is better and more effective protec-

tion 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 com-

batting 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

The new fee structure for the trademark application and renewal

may be of special interest for trademark applicants. A trademark

application in three Nice classes previously amounted to 900

euros and the renewal to 1350 euros. The official basic fee and

the renewal fee are now each supposed to be reduced due to

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 long-

term saving of 30%-40% can be expected precisely for compa-

nies, 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.


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An entry into force of the new regulation is expected at the end

of March/beginning of April in 2016. The regulation will have

direct effect immediately. The implementation of the new Di-

rective on a national level will still require some time, however.

Also, the provisions concerning the elimination of the graphic

requirement only become relevant within 18 months after the

entry into force of the regulation, since additional acts of trans-

position will be required.

The aforementioned innovations only constitute some important

aspects of the reform package. The reform will decisively ad-

vance the harmonization of trademark law on the European

level and provide trademark law in the area of legal harmoniza-

tion with a real pioneering function.

Silvia Meier

[email protected]

Stefan Schicker, LL.M.

[email protected]


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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 rela-

tionships were maintained, very promising contacts made and

inspirations collected. But not all discoveries were positive, as

not all competitors rely on fair competition. And the corrupt gain

as is well known through counterfeiting. We have already out-

lined in our last year's newsletter how these plagiarists must be

confronted at exhibitions. There we had suggested the prelimi-

nary injunction as an effective means for combatting plagiarists

at exhibitions.

But the plagiarists are also learning. Increasingly, one now

comes across foreign imitators, who place great value on want-

ing to exhibit in Germany at an exhibition, however, claiming

that they would have no interest in the German market itself. If

the plagiarists act cleverly, then in the worst case solely the

presentation of the goods can be documented. Is this enough

for a successful proceeding against such an action, however?

We provide an answer to this question:

Deception of the end consumer?

It may surprise some, but whoever exhibits counterfeit products

at an exhibition in Germany accessible only to a specialist audi-

ence, in the view of different German judges does not neces-

sarily 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

One plagiarist based in Turkey maintained a booth at the “ISM"

It exhibited cookie bars there, which were nearly identical to the

well known Mikado cookie bars, but packaged differently and

labelled with the word mark "Biscolata." The manufacturer of the

originals, however, could only substantiate the presentation of

the cookie bars in the package. The manufacturer had no prov-

able knowledge, however, that the plagiarist is also aiming at

the German market with its goods. The plagiarist, on the contra-

ry, defended itself that it had never intended to distribute the

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).

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 correspond-

ing intention could not necessarily be deduced solely from the

presentation.

Deception of the specialist groups?

Whoever exhibits a counterfeit product at a specialist exhibition,

advertises this, however, at least regularly to the international

specialist audience attending the exhibition. This constitutes a

domestic use of the objectionable trademark or product form,2

whereby an infringement and thus an injunctive relief is as a rule

given to the benefit of the manufacturer of the original products.

This claim does not concern the offering, distribution, or placing

on the market, but especially in the confectionery business it

may be easy to get over, if indeed not the "offering" but the

compulsory upstream advertising is prohibited to a plagiarist.

This conclusion has an important snag, however. The criterion

for likelihood of confusion or deception is not the general public,

but rather solely the expert exhibition visitor. And the latter

cannot be as easily deceived as an end consumer. It follows

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

How close success and failure are to each other can be learned

as well from another case named the "Tuppex" decision.

The plagiarist also based in Turkey maintained a booth at the

international Frankfurt specialist exhibition "Ambiente." There it

exhibited household containers under the mark "tuppex." Also,

the manufacturer of the "TUPPER" household containers could

present – as previously DeBeukelaer – no direct proof that the

plagiarist aims at the German market with its trademarks. It was

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.


/31




able, however, to submit on behalf of a preliminary injunction an

English language catalogue on display at the booth as well as

the self-presentation of the exhibition organizer, from which it

results that the goods of the "Ambiente" are also offered for

purchase to the specialist audience.

These indications were enough for Frankfurt Higher Regional

Court to accept that with the advertisement an invitation is made

at the same time to purchase the products in Germany. The

Higher Regional Court accepted both a violation through "adver-

tising" as well as through "offering." The manufacturer won.

Practical tip:

The burden of demonstration and proof of the individual infring-

ing acts lies with the manufacturer of the originals. .

Therefore, collect and research all information already in the

preliminary stages, which can provide indications of acts of

use (for example, of an offering, advertising, distribution or

other placing on the market which is planned or has taken

place).

Also, at the exhibition the chances are quite good of expos-

ing 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

[email protected]

Christoph Mayerhöffer

[email protected]


/31




Sweet victory

Lindt wins battle with Haribo over choc

bears

By their own admission, judges at the German Federal

Court of Justice entered unchartered legal territory in

trademark law when issuing the decision in favor of Lindt

and its Gold Teddy in a case brought by Haribo.1

Swiss chocolate manufacturer Lindt & Sprüngli has sold the

"Lindt Teddy", a chocolate bear wrapped in golden foil with a red

ribbon around its neck and the "Lindt" logo on its stomach,

during the Christmas season since 2011.

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 there-

fore officially keep the "Lindt Teddy" in its product range.

The judgment is of fundamental importance insofar as it is the

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

the proceedings had touched on "new legal ground in terms of

trademark law". It had to be assessed whether the relevant

1 BGH. 23/09/2015, I ZR 105/14

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

word mark with a product design, similarity could only be given

in case of the same meaning or concept. Conceptual similarity

is given where the word mark is the most obvious, unforced and

exhaustive name for the three-dimensional shape from the

relevant consumers' view. This is precisely what the Federal

Court of Justice did not consider as fulfilled in the case at issue.

Not everyone would automatically say "gold bear" when refer-

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 simi-

larity between a word mark and a product design would only be

given in exceptional cases, which in general would have to meet

stringent requirements. Otherwise, there was a risk that through

conceptual similarity between a word mark and a three-

dimensional 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 inten-

tion 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

In practice, the judgment means that, when introducing product

packaging, it must be examined if there is a word mark, which is

the "obvious, unforced and exhaustive name of the three-

dimensional design". Only then, trademark infringement may be


/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 con-

fectionery products in a particular form, such as in the shape of

bears.


[email protected]


/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

The labeling of a product is one of the most important forms of

marketing. The customer is supposed to receive information

about the product through the package design and decide to

purchase the product. Creative and unique elements as illustra-

tions and slogans are readily used for this purpose.

The labeling may not end in a misleading of the consumer,

however.

1. The "Felix Himbeer-Vanille Abenteuer"

This happened to Teekanne with its "Felix Himbeer-Vanille

Abenteuer" tea. Raspberries and vanilla flowers illustrated on

the package are supposed to indicate the flavors of the tea.

Such ingredients were, however, not contained in the tea ac-

cording to the list of ingredients.

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

Up to now it was recognized that consumers read the list of

ingredients, if they make their decision to purchase dependent

upon the ingredients contained – thus a misleading of the con-

sumer could have been prevented by the illustrated list of ingre-

dients. Now the European Court of Justice has decided, howev-

er, that the illustrated list of ingredients could not prevent a

misleading of the customer. Rather, the overall impression of

the labeling is decisive.

Whether the overall impression of the labeling produces a mis-

leading had to be finally decided by the German Federal Court

of Justice. To determine the overall impression any detail pre-

sented on the package design has to be included. On Decem-

ber 02, 2015 the German Federal Court of Justice decided, that

the consumer is misleaded, because the eye-catching infor-

mation 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, howev-

er? 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

Food Labeling Directive (“LMKV” – Lebensmittelkennzeich-

nungsverordnung) and the Food Information Regulation (Regu-

lation (EU) 1169/2011). The mandatory details include among

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 ingre-

2 BGH, Decision of 2/02/2015, I ZR 45/13


/31




dients must highlight allergens, for example, in bold type. The

minimum font size for mandatory details is 1.2 mm or 0.9 mm.

b) Advertising with nutritional- and health-related details

Since the Health Claims Regulation (Regulation (EC)

1924/2006) special provisions apply to nutritional- and health-

related details, which for advertising purposes are voluntarily

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 repre-

sented in a specific form (see Appendix XV of the Food Infor-

mation Regulation).

c) No misleading of consumers

So far Teekanne has still correctly labeled its "Felix Himbeer-

Vanille Abenteuer" tea. In addition to the provisions mentioned

the labeling of a foodstuff, however, may also not mislead the

consumer. This is regulated in Section 11(1) sentence 1 Ger-

man Food and Feed Code (“LFGB” – Lebensmittel- und Futter-

mittelgesetzbuch) in conjunction with Art. 7 Food Information

Regulation.

A detail is misleading, if it produces the effect of an inaccurate

detail and conveys an incorrect impression.

3. Basis for the assessment of a mislead-

ing

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.

On the basis of such an assessment the European Court of

Justice came to the conclusion in "Felix Himbeer-Vanille

Abenteuer" that the labeling is misleading because the ingredi-

ents illustrated were not contained in the product.

In the case law, the individual case has to be considered.

Therefore, a labeling cannot occur solely on the basis of one

decision issued. As already explained above, it was recognized,

for example, before the decision of the European Court of Jus-

tice that consumers, who make their decision to purchase ac-

cording to the ingredients, read the list of ingredients. In this

view the labeling of the tea would not have been misleading.

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

4. Conclusion

The labeling must contain the mandatory ingredients. Further-

more, it may not mislead the consumer. Whether there is a

misleading must be assessed on the basis of an average con-

sumer.

After the new decision of the European Court of Justice on the

"Felix Himbeer-Vanille Abenteuer" special caution in this con-

nection is advisable with respect to labeling, if reference should

be made only to a flavor and the ingredient illustrated is not

contained in the product.

Yvonne Schäfer

[email protected]


/31




Branded Content – Legal aspects

under German law

When the commercial comes on, the viewer turns the TV off. Ad

blockers are becoming increasingly popular among internet

users and television viewers. The German courts so far approve

of these business models referring to the negative freedom of

information of the individual, i.e. the freedom to expose oneself

to as little advertising as possible. The solution of the advertis-

ing industry is branded content. Advertising that is not annoying,

but rather entertaining! But even the dream of entertaining ad-

vertising – a win-win situation for all parties concerned – can

rapidly shatter before German courts. The Unfair Competition

Act, the Interstate Broadcasting Treaty, the Telemedia Act and

the State Press Act may require a lebelling as advertising if the

advertising character would otherwise be concealed to the

consumer.

The purpose of all of these provisions is to protect the free

decision of the consumer in two respects: First, he should have

the opportunity to critically evaluate and question advertising,

second to reject it. In the following we illustrate what should be

considered to prevent a violation of the prohibition of concealed

advertising at the example of two very relevant means of brand-

ed content:

1. Advertorials

Advertorials constitute advertising embedded in editorial con-

tent. This can take place against payment, but also free of

charge.

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-

ing character can be made clear by placement of a label, such

as "advertising" or "advertisement". But the content can also be

sufficiently identifiable as advertising, if a branding appears

before viewing the content which indicates its commercial na-

ture.

Featuring a company or product within editorial content can be

permissible within narrow bounds. In general, there is nothing

wrong with featuring only one product; a principle of neutrality

does not exist in this respect. The product or company may,

however, not be promoted excessively in an advertising man-

ner. Excessive advertising may be indicated if a product is por-

trayed in a very positive but general way under use of soliciting

language and without actually discussing and analyzing the

features of the product within a journalistic cause.

This problem is especially relevant at present in the context of

YouTube vlogs (YouTube video blogs). Vloggers advance to

become YouTube-Stars and monetarize their videos by targeted

advertising or product placement. Thus, the advantages of a

specific lipstick are examined in a make-up tutorial or a specific

game is being played in a gamer vlog. Based on the growing

significance of this form of advertising the state media authori-

ties have issued guidelines, which can be retrieved at the follow-

ing link and outline very plainly the labeling requirements in

particular as regards product placement:

http://www.die-medienanstalten.de/fileadmin/Download/

Publikationen/FAQ-Flyer_Werbung_Social_Media.pdf (unfortu-

nately only available in German)..


/31




2. Viral Marketing

Also, where branded content with advertising character is not

embedded in an editorial environment, but rather, for example,

on the website of the advertising company itself, a labeling

should also occur. Image or advertising films are aimed at being

shared with other users on blogs or in the social networks.

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

all. The links to such contents provided e.g. via the Like-button

should therefore already indicate the commercial character. A

sufficient indication can the mentioning of the trademark in a

form making clear that it links to content of the respective com-

pany.

Hanna Bickel, LL.M.

h.bickel @skwschwarz.de


[email protected]


/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

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 not-

ed that in this area some legal uncertainties still exist. The con-

tribution 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 dis-

pense with an integration of social media in their entirety, which

at the present time is seriously considered for hardly any indus-

try.

Depending on the kind of integration ("Fan page," "Like button,"

"Custom Audience") different problems arise.

1. Legal notice

Companies, which use "fan pages" (company websites, which

are established on social-media portals), are obligated to pro-

vide a complete legal notice with the information specified in

Section 5 Telemedia Act. The information must be easily identi-

fiable, immediately accessible and constantly available. Above

all, the easy identifiability can cause problems, because a provi-

sion under the term "Info" (unlike under "Contact") should not

suffice, but some social media providers permit no other possi-

bility of linking to the legal notice (Facebook, however, has

recently changed this). If the provision occurs via a link, the

content must be accessible with maximally two clicks.

2. 2. Data protection notice

Reference can be made for the placement of data protection

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.

In detail:

2.1 „Fanpages“

It is not conclusively clarified to what extent operators of com-

mercial "Fan pages" are responsible for the data processing

during the visit to the site by users. At present this is predomi-

nantly 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 protec-

tion 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, independ-

ent manner (for example, as part of the organization of competi-

tions). 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“

The integration of "Like buttons" (application/plugin for connect-

ing the social media portal with one's own website, through

which contents can be directly shared on the portal, can clearly

be more problematic. Unlike in the case of "Fan pages" the

company participates directly in the data processing operation

through the integration of plugins on its website. Thus, the user

also bears a joint responsibility for a possibly unlawful pro-

cessing.

Such an unlawful processing already exists, if the way in which

the personal data is handled is not comprehen-sively disclosed.

Due to the lack of transparency for which the portal operators

are responsible an appropriate disclosure is practically impossi-

ble for companies at present. In the case of integration of "Like

buttons" a certain danger of cease-and-desist warnings there-

fore exists. This danger can be reduced only by a comprehen-

sive clarification in the data protection notices or explicit con-

sents of the user.

2.3 „Custom Audiences“

"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


/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

the data processing a mandatory consent of the parties con-

cerned must exist according to Section 4(1) Federal Data Pro-

tection Act. Any such consent must specifically indicate which

data are transmitted for what purpose to whom. Otherwise fines

or claims for damages are threatened.

Conclusion

The use of social media portals as promotional measures is

extremely attractive and effective for companies. The legal

requirements are often difficult to understand, however, and

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 cease-

and-desist warnings, fines or claims for damages.

Johannes Schäufele

[email protected]


/31




Confectionery sales: Compensation

claim of the distributor

Confectionery manufacturers frequently distribute their products

via so called distributors, primarily in the distribution abroad.

These are independent distribution companies, which purchase

the goods in their own names and on their own account from the

manufacturer and resell them to their own customers.

In the course of the cooperation the distributor builds a custom-

er base. Frequently, a dispute occurs at the contract termination

as to whether the manufacturer has to pay compensation to the

distributor for the manufacturer being able to continue to supply

this customer base in the future, either in direct business or

through other distribution companies. Frequently, an amount

totaling an annual margin is claimed. It can therefore involve

quite significant amounts.

If German law is to be applied to the distributorship agreement,

such a claim can result from a corresponding application of

commercial agency law. Section 89b Commercial Code pro-

vides for a compensation claim for commercial agents.

The case law applies the standard accordingly to distributors.

This is the case, however, only if two conditions are satisfied:

(1) On the one hand, the distributor must be intensively inte-

grated 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 dis-

tributor thereby play a role. The overall view is decisive. (2) In

addition, the distributor must be required to transfer the custom-

er base to the manufacturer. That means that an obligation must

arise from the contract, on the basis of which the distributor has

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 re-

quire 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,

that this feature must in any case exist as a rule.1 Manufactur-

ers, 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

distributor arises from it to disclose customer identities. What if

the manufacturer would like to use the customer data in any

case during the term of the distributorship agreement, for exam-

ple, by direct mailing, however? Here the Federal Court of Jus-

tice has shown a way out.2 Accordingly, no compensation claim

is triggered, if the contract indeed provides for an obligation to

name the customers, however, the manufacturer is obligated to

delete and to discontinue using the customer data after the

contract termination.

Practical tip

Frequently manufacturers simply exclude the compensation

claim for the commercial agent or distributor. This is always

invalid in respect to commercial agents operating in Europe,

however, which is often unrecognized. In the case of distributors

it must be differentiated where the latter is working. Depending

on site of operation such a regulation can be valid or invalid.

Regulations concerning the amount of the compensation claim

are also problematic. These can be "partially invalid." This

means that the commercial agent or distributor can invoke the

regulation – if it is advantageous particularly to him – , while the

manufacturer cannot invoke it – if it were advantageous to him.

1 Two decisions dated 02/05/2015, Cases VII ZR 109/13 and VII ZR 315/13.

2 Decision dated 02/05/2015, Case VII ZR 315/13.

Oliver Korte

o.korte @skwschwarz.de


/31




Practice Group Industrial Property /

Competition Law

Dr. Dorothee Altenburg1

Hanna Bickel LL.M.

Jens Borchardt LL.M.2, 7

Dr. Markus Brock1

Dr. Ilja Czernik1

Georg Delhaes

Markus von Fuchs LL.M.1

Fabian Hartmann mag. jur.

Dr. Philipp Heigl LL.M.

Dr. Johann Heyde

Dr. Magnus Hirsch1

Dr. Oliver Hornung

Margret Knitter LL.M.1

Stefan Kridlo6


Silvia Katharina Meier

Dr. Andreas Peschel-Mehner

Stephanie Pfaff

Marc Pussar

Yvonne Schäfer

Stefan C. Schicker LL.M.1, 2, 3

Dr. Konstantin Wegner LL.M.

Dr. Hans Markus Wulf2

Practice Group IT & Digital Business

Friederike Behrends

Nikolaus Bertermann2

Jens Borchardt LL.M. 2, 7

Dr. Markus Brock1

Dr. Oliver M. Bühr2, 6

Markus von Fuchs LL.M. 1

Dr. Philipp Heigl LL.M.

Florian Hensel7

Dr. Johann Heyde

Dr. Oliver Hornung

Dr. Wulf Kamlah

René M. Kieselmann

Dr. Eberhard Kromer MBA5, 7

Franziska Ladiges

Daniel Meßmer

Elisabeth Noltenius LL.M.

Dr. Matthias Nordmann M.A.5

Dr. Matthias Orthwein LL.M.


Daniel Pfeifer2

Sven Preiss LL.M.

Yvonne Schäfer

Johannes Schäufele

Stefan C. Schicker LL.M.1, 2, 3

Jan Schneider2

Martin Schweinoch2

Benjamin Spies

Julian Westpfahl2

Dr. Hans Markus Wulf2

Practice Group Media and Entertainment Law

Dr. Dorothee Altenburg1

Dr. Andreas Bareiss

Friederike Behrends

Hanna Bickel LL.M.

Jens Borchardt LL.M.2

Dr. Ilja Czernik1

Dr. Martin Diesbach

Dr. Ulrich Fuchs7

Dr. Christoph Haesner M.C.L

Fabian Hartmann mag. jur.

Florian Hensel7

Dr. Johann Heyde

Dr. Magnus Hirsch1

Dr. Bernd Joch

Norbert Klingner

Margret Knitter LL.M.1

Stefan Kridlo6

Dr. Eberhard Kromer MBA5, 7


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.

Practice Group Commercial and Distribution Law

Marion Anzinger

Dr. Philipp Asbach

Dr. Michael Brauch

Dr. Oliver M. Bühr2, 6

Klaus Kelwing

Stefanie von Knobloch

Oliver Korte5

Sabine Kröger4, 5

Christine Lingenfelser LL.M.

Caroline Lorenz

Dr. Ulrich Muth4

Dr. Kolja Petrovicki LL.M. (UPenn)

Sven Pohl

Andreas Seidel

Dr. Jürgen Sparr LL.M.

Dr. Sebastian Graf von Wallwitz LL.M.5

Dr. Josef Zeller5

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

Impressum

SKW Schwarz Rechtsanwälte Wirtschaftsprüfer Partnerschaft mbB

Munich Local Court PR 884

Editorial Department: Margret Knitter LL.M.

Email: [email protected]

Offices

10719 Berlin

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T +49 (0) 30.889 26 50-0

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Occupational title: Rechtsanwalt/-anwältin der BRD. Competent bar associations: Bar

Associations of Berlin, Düsseldorf, Frankfurt am Main, Hamburg, and Munich. The profes-

sional 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

confectionery industry special - annual review 2015

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