JUNI 2009
IP-to-Date Special
Confectionery Industry Current Information about Trademark and Competition Law in Europe
Page 1/19
January 2013
Overview of Topics
– Guideline on the Registrability of Three-
Dimensional Trademarks consisting of the
Shape of the Product
– Acquired Distinctiveness of Three-Dimensional
Trademarks consisting of the Shape of the
Product
– The Fight of Three-Dimensional Trademarks
consisting of the Shape of the Product against
Counterfeiting
– Protection against Copies of Product Lines un-
der Competition Law
– Regulatory and Remarkable News in the Field of
Confectionery in 2012
- The New EU Positive List on the EU Flavor-
ing Regulation
- News about the Health Claims Regulation
- Food Information Regulation
– "Sweets" on Trial – Case Law in 2012
- Likelihood of Confusion
- Rejection of Likelihood of Confusion
- Distinctive Character
- Keyword Advertising
Guideline on the Registrability of Three-Dimensional
Trademarks consisting of the Shape of the Product
The confectionery industry is one of those economic
sectors, which are particularly trying to generate market
share by means of protecting their product design.
There are several possibilities to protect good design,
whether it is the shape of a product or its packaging,
specifically through copyright law, unfair competition law
or with the registration as a trademark and registered
design.
Especially registration as a trademark is favored by many
companies because it allows for perpetual protection,
contrary to registered designs. The monopolization of the
shape of a product through a 3 D trademark registration
has only been possible in Germany since 1995 (amend-
ment of the trademark law) and in the EU since 1996.
There had been registrations of a number of three-
dimensional trademarks on the first day of validity of the
new trademark law, for example for the shape of the
Ritter-Sport chocolate bar - with and without packaging:
Bar of Ritter-Sport without Packaging of Ritter packaging -Sport without print
The Trademark Offices’ euphoria of registration in the
first years gave place to a certain reservation. Meanwhile
only in exceptional cases marks consisting of the shape
of the product itself were considered as having inherent
distinctiveness.
Compared to traditional trademarks, there are a few
specific features for marks exclusively consisting of the
shape of a product itself. Such three-dimensional signs
may not be capable of being protected as a trademark
exclusively consisting of a shape, which
a) results from the nature of the goods themselves
b) is necessary to obtain a technical result
c) gives substantial value to the product.
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a) Shape resulting from the nature of the goods
themselves
This exclusion is fulfilled if the mark solely consists of the
basic shape of the product. The shape may not exclu-
sively consist of features, which are necessary for the
type of good to fulfill its purpose.
This argument was for example denied for the Bounty
bar, even though registration was re-
fused for other reasons at the end.
OHIM’s Board of Appeal argued at the
time that the waves on the surface of
the bar did not result from the nature of the good itself.
For the Kinder Milchschnitte, the
German Federal Court of Justice
argued that ready-made cakes (for
which the trademark is registered)
are offered in a wide range of shapes so that the
Milchschnitte is not reflective of the basic shape.
b) Shape necessary to obtain a technical result
Trademarks exclusively consisting of a shape necessary
to obtain a technical result are also unable to claim
trademark protection. This assumes that the essential
functional characteristics of the shape of the goods are
only technically causal to obtain the technical result. This
also applies if the technical result may be achieved by
other shapes.
The German Federal Patent Court denied
that the shape of the Halloren ball is neces-
sary to obtain a technical result. In the end,
it refused registration of the mark for other
reasons, however.
c) Shape, which gives essential value to the
product
Finally, signs consisting of a shape that gives the product
an essential value are not capable of being protected as
trademarks. This exclusion is fulfilled if the public deter-
mines the market value of the product as a result of the
shape's beauty and it can therefore be considered im-
possible from the outset that the shape possesses be-
sides its esthetic effect also the function as an indication
of origin.
The German Federal Patent Court de-
nied this prohibition for example for the
Lindt Goldhase (gold bunny). The judges
argued that a wide range of different
possibilities exist to design chocolate Easter bunnies.
This applied both to the shape and to the packaging and
the arrangement of its colors.
The German Federal Patent Court argued
likewise in the Rocher ball case. It is un-
founded that the public would see the actu-
al tradable product in the esthetic shape
and that other aspects, such as the taste of
the praline, would only play a minor role for the value of
the product.
These three absolute grounds of refusal may not be
overcome by the proof of acquired distinctiveness.
Apart from these three special exclusions, in principle,
the assessment of the registrability of a three-
dimensional trademark exclusively consisting of the
shape of the product is not different from traditional
trademarks. This means that the signs need to have a
certain degree of distinctive character and there should
be no general interest, which requires that the signs
referred to should be for the free use of all.
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Distinctiveness
A mark has the necessary degree of distinctiveness if the
consumer sees an indication of origin for the goods in
question. The essential function of a trademark is to
enable the commercial origin of the goods and services
bearing it to be identified. This exclusively depends on
the customer's perception. The mark is capable of being
a trademark if the customer sees in the shape an indica-
tion of a specific company and not only an image of the
product itself.
Case law, however, sets higher standards for three-
dimensional marks exclusively consisting of the shape of
the product itself or its packaging than for traditional
trademarks. The reason for that is that customers in
general do not see an indication of origin in such a sign.
In general, the inherent distinctive character is denied for
three-dimensional trademarks consisting of the shape
itself. So for example in the decisions regarding the Au-
gust Storck sweets:
Significant departure from the norm
Case law demands that the shaping of a product departs
significantly from the standard or customs of the sector to
reach the necessary distinctiveness. This means that the
shape must deviate considerably from the standard
shapes in that sector for that the public will see an indica-
tion of origin in it.
The mere combination of presentational features which
come naturally to mind and which are typical of the
goods in question or the variant of common shape is in
general not enough to serve as an indication of trade
according to prevailing case law.
It is important to compare the mark with the existing
shapes in the corresponding product sector. As there
exist many different shapes in the confectionery industry,
it is difficult to show a significant departure form the
norm. If a product's shape is deviating in certain features
from designs on the market, in a second step it has to be
demonstrated that the public will see an indication of
origin due to these specific features.
Courts decided that the following confectionery products
do not deviate from other shapes commonly used for
sweets:
Knoppers Chocolate Mouse of August Storck KG
On the other hand, it was held that the public would see
an indication of origin in the KitKat bar because compet-
ing products look different.
This decision of the German Federal Patent Court al-
ready dates back to 2004, however.
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Requirement of Availability
Further, there is a general interest that trademarks con-
sisting exclusively of signs or indications which may
serve, in trade, to designate characteristics of the goods
and services, may be freely used by all and thus may not
be registered as a trademark, subject to an acquired
distinctiveness. The general public should be saved from
unjustified legal monopolies.
What speaks for the need to keep a shape available is if
the shape lies within the normal variety of shapes in the
market in question and the possibilities for individualizing
the shapes are limited. In principle, there is a general
interest to be freely used by all if the trademark consists
exclusively of signs or indications that may serve to des-
ignate characteristics of the goods and services.
In that respect, the German Federal Patent Court decid-
ed that the Merci bar is essentially made
up of the shape of the product. Thus, the
sign merely describes characteristics of
the product, namely the outer look of the shape. There is
in principle a special public interest in using these shapes
freely, rather than by one single company.
Margret Knitter, LL.M.
Acquired Distinctiveness of Three-Dimensional
Trademarks consisting of the Shape of the Product
A mark that is lacking genuine distinctiveness may, how-
ever, overcome the aforementioned ground for refusal if,
as a result of extensive use, it has become accepted as
an indication of origin by an essential part of the relevant
trade circles.
Relevant criteria for a secondary meaning are among
others the market share held by the brand, sales figures,
revenue, geographical circulation and advertising ex-
penditure.
In addition to statements from the competent chambers
of industry and commerce usually requested where only
commercial consumers form the relevant trade circle,
trade surveys are mandatory if other means of ascer-
tainment of a secondary meaning are difficult because
trademark protection is sought for a product shape that is
not used in isolation, but always in combination with
other features such as logos, word marks or features
such as packaging. In this case, market shares, sales
figures and advertising expenditure usually only have
remote significance, since they may not prove that the
achieved level of secondary meaning is exclusively
based on the three-dimensional form applied for.
Nevertheless, an isolated use of the claimed product
shape subject without further design features is not nec-
essary. For the ascertainment of a secondary meaning of
trademarks for confectionaries, in general not only the
respective consumers, but all trade circles are relevant
since it has to be assumed that sweets are used as gifts
by all customers.
In case of a national trademark application, secondary
meaning has to be proven in Germany, for a Community
trademark application, however, in all Member States.
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The latter has become nearly impossible in view of the
increasing number of Member States.
For this reason, protection of the Bounty bar had been
revoked by a cancellation proceeding since
the owner was able to prove a secondary
meaning only in 5 instead of 15 Member
States relevant at the filing date.
Likewise, the ECJ found that the Goldhase
had not gained a secondary meaning with
the involved trade circles of all Member
States.
In contrast, Lindt was able to establish a
degree of secondary meaning for the
Goldhase in neutral design with over 60%
of German consumers and thus successful-
ly defend a cancellation request.
As far as the level of secondary meaning is concerned,
Trademark Offices and case law do not set up rigid re-
quirements, however, a degree of less than 50% may not
result in the confirmation of a secondary meaning. This
level is also laid down in the Directive for the examination
of trademark applications of the German Patent and
Trade Mark Office of June 13, 2005, including the usual,
commonly accepted catalog of questions to be raised in
a survey for secondary meaning.
The general recognition of a product's shape as well as
the identification level as device of origin for a company
will in general be requested in the course of a trade sur-
vey. Decisive for the courts is, in the end, only the degree
of association with the specific company of the trademark
owner.
To sum up, the proof of secondary meaning has to
- have, as subject, the specific trademark in the
applied form, i.e. without further design features
or signs,
- for confectionaries in general take place from
the view of the reasonably well-informed, ob-
servant and circumspect average consumer,
- cover the relevant period of time, whereas it has
to be noted that trade surveys keep their signifi-
cant only for a period of 5 years, and
- at least according to the case law of the German
Federal Patent Court, consider a fault tolerance
of up to 5% (according to the Gaussian normal
distribution curve).
Scope of Protection
If a three-dimensional mark has been registered due to
its secondary meaning, its scope of protection is, accord-
ing to case law, in general the same as for a trademark
of genuine distinctiveness, i.e. the scope of protection is
normal.
The definitions of scope of protection and use as a
trademark may often cause difficulties if the infringing
form is not identically copying the three-dimensional
shape of the registered mark, but is only a variation of a
commonly used shape. Nevertheless, the advantages of
a trademark protection should not be neglected, in par-
ticular for unusual and successful product shapes.
Dr. Dorothee Altenburg
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The Fight of Three-Dimensional Trademarks consist-
ing of the Shape of the Product against Counterfeit-
ing
"Fight of the
Sweets," "Gold
Bunny on Trial:
Lindt loses again in
the Bunny Dispute,"
"A chocolate bunny
on the run," "Victory
for Aldi against Oetker: Paula and Flecki grazing together
on the pudding market.” One could think these headlines
were published by the tabloid press. Such headlines
come from the noble pens of German economy and law
journalists, however. Usually submitting to the character-
istic prosaic and technical language in such occasions,
they seem more than willing to show their humorous side
to the reader. Even if such an approach is admittedly
almost obvious, the dispute’s importance for the compa-
nies is too often underestimated or partly even ridiculed
within the articles. Chances are high that a journalist
claiming the matter of a dispute to be "pudding only
mundane to a layman” (German Press Agency dpa)
failed to understand that the partly fierce competition of
confectionery manufacturers often requires a differentia-
tion of origin already through the shape of the product
itself. Thus, companies on this specific market experi-
ence an enhanced need to protect their product shapes
on the basis of trademarks and registered designs. The
following article is intended as a practical guide on en-
forcement of intellectual rights as regards product
shapes.
Case of Infringement Recognized, what now?
Once a new product shape of a competitor is discovered
by a company that it considers to bear an unacceptable
similarity to one of its own products, the available possi-
bilities to proceed strongly depend on the intellectual
property rights owned protecting the own product
shapes. At best, the company has already registered the
product shape as a three-dimensional trademark or at
least as a design at the German or European Trademark
Office. If that is the case, the company will be able to
directly take action against the competitor based on their
registrations. Otherwise, in absence of respective regis-
trations, the possibilities to take action are restricted to
unregistered designs, which is associated with substan-
tial difficulties in practice. Furthermore, for every case
mentioned above as an additional tool to fight infringe-
ments, it has to be borne in mind that supplementary
protection of creations under German competition law is
granted.
Three-Dimensional Trademarks, a "Regular"
Trademark?
As indicated above, generally the assessment criteria
applied to three-dimensional trademarks also apply to all
other types of trademarks. Thus, a three-dimensional
trademark is not to be assessed differently from a word
mark or a figurative mark and consequently has to face
the same crucial question of trademark law: Is the con-
sumer likely to perceive the individual three-dimensional
shape as an indication of origin or just a shape?
The German Federal Court of Justice answers this ques-
tion by significantly differentiating from the "regular” word
mark. In its opinion, the shape of a product is primarily
about esthetics and functionality embodiment of the de-
sign and not about indication of origin. Therefore, the
consumer generally perceives the shape to a lesser
degree as indication of origin, which consequently leads
to a lowered scope of protection. Nonetheless, judges of
all instances have repeatedly recognized the ability of
product shapes to serve as an indication of origin.
Source: dapd
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Does a consumer recognize a company by the shape
of its products?
For nine years now,
exactly this question
about the indication-of-
origin function of a shape
has busied courts in what
is referred to as the Gold
Bunny (Goldhasen) case between a gold chocolate bun-
ny produced by Swiss firm Lindt & Sprüngli and its Ba-
varian cousin manufactured by Riegelein.
In detail, the question was raised whether the shape is
decisive at all when the product in dispute features a
three-dimensional mark (shape of the bunny) as well as a
word mark applied on the shape (Lindt GOLDHASE) or
whether the word mark, then, dominates as a general
rule. This has been answered with a clear "no" by judges
of the German Federal Court of Justice, who referred to
the fact that such an empirical principle - in opposition to
the combination of verbal and figurative trademarks –
does not exist. The German Federal Court of Justice
rather considered another not readily transferable peculi-
arity of the dispute to be more problematic. As they found
that already a multitude of other sitting chocolate bunnies
are marketed during the Easter period in Germany and
that the common shape of a sitting bunny will not be
perceived as an indication of origin. On those grounds,
an infringement was rejected in the final analysis by the
Higher Regional Court of Frankfurt. Currently, the case is
back at the German Federal Court of Justice due to a
further appeal. Interestingly, Lindt succeeded in a com-
parable case against confectionery manufacturer
Hauswirth before the Austrian Supreme Court of Justice!
It has to be noted, however, that the major message as
applicable to other cases by the German Federal Court
of Justice is that a three-dimensional trademark pre-
serves its ability to indicate origin despite a word mark
being applied on the shape. Thus, it has to be stated that
the highest German judiciary grants indeed quite strong
protection to three-dimensional trademarks. By doing
this, the judiciary of course does not fail to see that a
monopolization of common shapes especially from cur-
rent market leaders must not be permitted.
With this in mind, in March 2012, the Higher Regional
Court of Cologne
found the square
tube packaging of
Ritter Sport (a widely
available chocolate
bar in Germany) to even inhere an increased distinctive
character (Case 6 U 159/11). In final conclusion, an in-
fringement was, however, rejected but only because the
applications of the copied tube packaging featured in
Germany the hugely famous logo and purple color of
Milka.
In 2006, this question revolving around the indication-of-
origin function of product shapes was already influenced
in revolutionary manner by the Higher Regional Court of
Cologne in its "Duplo Case" (Case 6 W 5/06). The judges
in Cologne, on the one hand, accepted that a strict divi-
sion between characteristics of the product itself and the
indication-of-origin function would be artificial since the
consumer visualizes the product as a whole and does not
minutely distinguish between characteristics and indica-
tion of origin. On the other hand, the judges found that
the competitor's product infringed the trademark rights
solely because the copied product featured the same
basic shape, which was promoted with great effort by the
trademark owner as being "the world’s longest praline.”
The judges did not allow themselves to be led astray by a
considerably different pattern of the basic shape.
Duplo bar Infringing product
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Of course, the famousness of the "Duplo bar" in Germa-
ny as well as associated increased recognition value
contributed to those findings. This does not mean that
only well-known product shapes may claim such trade-
mark protection, however.
In this context, the Higher Regional Court of Hamburg
found in 2008 (Case 5 U 52/06) with regard to undulated
chocolate sticks that the con-
sumer is deemed to perceive
product shapes as an indication
of origin especially if the shape
is to be considered as somewhat
eccentric. Thus, the Court found
a second wavy chocolate stick
by a competitor to infringe three-
dimensional trademark rights of the applicant without
even taking into account the renown of the mark.
Original Infringing Product
The above described strong position of product shaped
three-dimensional trademarks becomes
even more evident by taking a look at a
current Regional Court decision under
reversed circumstances (Regional Court
of Cologne, decision of December 18,
2012, Case 33 O 803/11). Leading con-
fectionery company Haribo won a trademark dispute
against Swiss Lindt & Sprüngli in the "Gold bears dis-
pute” (see illustration above). In its decision, the Court
considered the product shape of Lindt’s gold chocolate
bear to be a conceptual adoption of Haribo's word mark
"Goldbären” (Gold Bears). In consequence, if the shape
of a product is capable of deceiving a consumer about
the real origin not solely in direct comparison but is able
to abstractly indicate to a competitor's word mark, there
cannot remain any doubt about their indication-of-origin
function.
What is the infringement of a product design?
In addition to a registration of a product shape as three-
dimensional shape, which under certain circumstances
might be connected with additional effort, a comparably
easier and in court proceedings even more effective
alternative tool to protect the product is the registration of
a design. On the basis of a registered design, the owner
may take action against imitators where in the proceed-
ing the imitator is obligated to prove missing novelty or
missing competitive originality of the design. Further-
more, if the design possesses sufficient originality with
regard to already existing shapes and if it is not merely
born out of technical necessities, the design is infringed
as soon as a competitor's product evokes the same gen-
eral impression.
By the way, protection of a design is also granted for
three years even without registration.
Practical Tips
Three-dimensional trademarks of product shapes are a
well-honed sword in the arsenal of innovative confection-
ery manufacturers. Once their strength is not underesti-
mated, they are a quite effective weapon to, initially,
discourage bold imitators and, where necessary, enable
the launching of court action. Three-dimensional trade-
marks do not always work as a good tool to transfer a
reached market position of a special shape of confec-
tionery into a monopoly, however. Thus, courts generally
tend to set a limit if a too ambitious competitor tries to
make the use of common shapes harder, such as square
chocolate bars, common packaging or bicolored pudding.
Furthermore, additionally to registration of a trademark
one should consider registration of a design. Although
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conceptual adoptions cannot be combatted with regis-
tered designs in the same way as with trademarks, de-
sign rights are a safe bank in cases of classic copies and
imitations of products.
Dr. Magnus Hirsch
Christoph Mayerhöffer [email protected]
Protection against Copies of Product Lines under
Competition Law
As Toblerone and Kinderschokolade have shown, unu-
sual product shapes or compatibly designed product
ranges are important to set one apart from other prod-
ucts. Innovative product shapes, especially if they are
established on the market, however, often attract those
engaged in counterfeiting and piracy wanting to profit
from the good reputation of the original products. Often,
the protection of a product shape by a trademark is not
easily possible. Especially concerning product lines or
ranges it is often difficult to protect the characteristics of
this product range altogether against copying by third
parties through trademark registrations.
Under certain conditions, Section 4(9)(a) and (b) German
Unfair Competition Act offers what is referred to as sup-
plementary protection of performances under competition
law, which means protection against the sale of products
copied by competitors. This requires, however, the origi-
nal product or the whole range of products to have a
competition law-related characteristic. That means that
the design of the product range has to have such recog-
nition value that the customers mainly assume that just
one producer uses this design, where they do not have to
know the producer. Additionally, the copyist must have
acted unfairly. The copied product must evoke an avoid-
able deception about the origin of the product or at least
have used the valuation of the original product.
And this is exactly the problem with confectionaries, as
shown by a large range of judgments being adverse to
the producers of original products. The circulation is used
to a whole host of goods and product ranges made by
different producers, especially in the confectionery mar-
ket. Therefore, consumers would even pay attention to
slight differences and also always to the product descrip-
tions and producer information as regards such products,
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where an avoidable deception by copying of the product
shape is rarely to be feared. The better known and the
more renowned the producer is, the more his good repu-
tation is coming to the fore.
Even more carefully attention should be paid to the de-
velopment of shape and packaging of single products or
complete product ranges, which clearly differ from other
packaging.
Recently, again a producer of confectionaries had to
experience in court that an innovative idea alone does
not protect against copying. The producer distributes
among others a product range of 22 products. Although
they are all named differently, however, they are all de-
scribing a special emotional state. Thus, there is a
"Liebeslakritze” (love liquorice), "Turteltee” (sweet whis-
per tea) and also "Gute
Laune Drops” (good mood
drops), which are or were
each at least partly protect-
ed by trademark law. All
products have a yellowish
packaging with a product
description and single motifs
on it, each symbolizing the
corresponding emotional
state.
The producer took action against another producer who
was distributing "Gute Laune Brause Taler” (good mood
thalers) in similarly de-
signed packaging and
based the action on the
one hand on trademark
law against the use of
product description and
on the other hand on the
supplementary protec-
tion of performances
under competition law, because of the similar packaging,
which would suggest the product belonging to the prod-
uct range of the plaintiff.
While the plaintiff was prevailing with the trademark-
related claim of the expression "Gute Laune Brause
Taler”, it also lost according to the decision of the Court
of Appeal of Cologne (decision of August 10, 2012 – 6 U
17/07) with its claim to interdict the use of those packag-
ing designs. Indeed, the court accepted obviously prod-
uct copying because the general idea as well as some
design features (e.g., color and designs) which show a
positive emotional state were taken over: The court of
appeal considers the competition-law-related features of
the original packaging of the product range to be weak,
however. Therefore, each product of this range has very
different design features, which would weaken the char-
acteristics of this product range besides the common
features, such as similar color, unique type and a product
description concerning the emotional state. Compared to
these different design features, the common features
were said to have been pushed into the background.
Therefore, the court also denied a deception of origin.
Indeed, the defendant would copy two common features
of the original product line but because these features
would be so weakened by the plaintiff himself, a decep-
tion of origin could be excluded due to the inclusion of
further design features.
Conclusion
The copying of a good idea is allowed, as long as there is
no special protective right nor unfairness while copying.
Therefore, a good and innovative idea often is not
enough to join the protection of performances under
competition law. Especially regarding the design of whole
product ranges it should been taken into account that
also the most important design features turn up again in
all products of the range and that there are as little differ-
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ences as possible as regards the design of the single
products. If the producer’s products differ already as
regards these features, he weakens his claim unneces-
sarily. Furthermore, it should be tried to safeguard indi-
vidual design features by trademarks and design patents.
Markus von Fuchs, LL.M.
Regulatory and Remarkable News in the Field of
Confectionery in 2012
The regulatory guidelines drawn up by the European
Union (EU) have been strengthened in the field of food-
stuffs in 2012. Especially, the confectionery industry has
been affected by these changes.
The EU Commission published in addition to the EU
flavoring regulation a positive list of flavorings as well as
transitional provisions of already manufactured foodstuffs
for the first time in October 2012. For the permission of
health related advertising slogans (Health Claims Regu-
lation), new guidelines were drawn up in May 2012. Addi-
tionally, a new Food Information Regulation entered into
force in November 2011, which provides for important
changes regarding food and nutritional labeling in the
next few years.
The following article deals with these current changes
that mandatorily need to be complied with. An infringe-
ment of these EU regulations can lead to imprisonment
or fines in a five-digit amount. Furthermore, under the
German Unfair Competition Act, an infringement of these
regulatory guidelines authorizes competitors and con-
sumers’ associations to send warning letters liable to
costs.
New EU Positive List on EU Flavoring
Regulation
Since January 2011, the Regulation on flavorings and
certain food ingredients with flavoring properties for use
in and on foods has been in force throughout the Euro-
pean Union [(EC) No. 1334/2008 (referred to as EC fla-
voring regulation)].
Accordingly, the flavorings used have to be indicat-
ed and characterized correspondingly in addition to
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the food information regulation. In addition to clas-
sification, the flavoring regulation sets purity criteria
and quantitative limits for hazardous or undesirable
substances. Finally, the flavoring regulation bans
the use of non-compliant flavorings.
The EC Commission initially drew up a positive list [(EU)
No. 873/2012] in October 2012 to show which flavorings
are allowed. A comprehensive examination by the Euro-
pean Food Safety Authority (EFSA) had preceded the
positive list. Currently, just over 2,500 substances are
registered which may be retrieved via the following link:
eur-
lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2012:
267:0001:0161:EN:PDF
The positive list will come into force on April 22, 2013.
The flavoring regulation provides for an adjustment dead-
line until April 22, 2015 by which date the industry is to
adjust its production.
Once that deadline has expired, no flavorings may be
used other than those mentioned in the positive list.
In this regard, however, it is to be pointed out that 400 of
the current authorized flavoring substances have not yet
been examined in conclusion. For these flavorings, the
food industry is requested by EFSA to provide additional
data. Therefore, these flavorings may be deleted from
the list. Additionally, the list is expected to be amended
by new flavorings in the years to come. EFSA expects
numerous requests. Therefore, it is recommended to
keep a close eye on the positive list because it will be
updated annually.
Requests for inclusion of flavoring substances can be
filed any time. The filing of the request is to meet the
requirements of EFSA. The corresponding manual can
be found at:
www.efsa.europa.eu/en/scdocs/doc/1623.pdf
In addition to the positive list, the EU Commission
passed a second regulation [(EU) No. 873/2012] effective
October 22, 2012. That regulation rules transitional
measures for foodstuffs containing flavoring substances
no longer allowed under the new EU positive list but have
been placed on the market or have been characterized
before October 22, 2014. In addition, the second regula-
tion contains transitional deadlines for certain separate
listed flavoring substances. As a result, the second regu-
lation stipulates different transitional deadlines for each
flavoring. The various deadlines can be retrieved via the
following link:http://eur-
lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2012:
267:0162:0164:EN:PDF
News about the Health Claims Regulation
Advertising with health-related statements (referred to as
health claims) on food is forbidden in principle, unless
authorized by the European Commission.
It has always to be re-examined in every individual case
whether an advertising message is to be considered a
health claim,; although case law is rather lenient on the
assumption of a health claim. For example, the German
Federal Court of Justice rated in December 2012 the
slogan "As important as the daily cup of milk" to be a
health claim.
Additionally, the European Court of Justice (ECJ) clari-
fied in September 2012 that "health claim" does not just
apply to statements improving the state of health. Also
statements giving the impression of a product being less
harmful in its composition than a comparable competitive
product may be considered a health claim. In the pro-
ceeding of the European Court of Justice, the term "di-
gestible" associated with the indication of a reduced
content of materials seen as disadvantageous was rated
as health claim.
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In May 2012, the European Commission published a list
with 222 authorized health claims. That list can be re-
trieved via the link below:
http://eur-lex.europa.eu/LexUriServ/LexUriServ.do
?uri=OJ:L:2012:136:0001:0040:EN:PDF
The list is a part of the EC Regulation about nutrition and
health related statements about food [(EC) No.
1924/2006; (referred to as Health Claims Regulation)]
which already entered into force in 2007. The list entered
into force for the whole EU on December 14, 2012. The
list is scheduled to be updated every year. Currently,
there are more than 200 health claims for EFSA to inves-
tigate.
It is important that the wording of the health claims may
not be changed. If for example the list says "vitamin C
contributes to a normal energy metabolism," no advertis-
ing may be made with the wording "Normal energy me-
tabolism owed to vitamin C."
Food Information Regulation
With the Regulation on the provision of food information
to consumers [(EU) No 1169/2011 (referred to as Food
Information Regulation), which entered into force in De-
cember 2011, uniform labeling of food is supposed to be
achieved.
In addition to indication of the product’s country of origin
or place of provenance, the Food Information Regulation
provides that certain declarations must be made when
using food-imitating products, sweeteners, sugar, food-
stuffs containing caffeine and allergens. The Food Infor-
mation Regulation also stipulates how this information is
to be marked. For example the mandatory particulars
have to show a minimum size of 1.2 mm. Furthermore,
the Food Information Regulation stipulates advertisement
in the food sector. In this context, the Food Information
Regulation especially bans ambiguous statements. Final-
ly, the Food Information Regulation contains among
others guidelines for distance selling, sell-by dates, net
quantity and nutrition declaration.
The various requirements, including those not mentioned
above, can be found under this link:
http://eur-
lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2011:
304:0018:0063:EN:PDF
The regulations to the characterization of food will be
binding as of December 13, 2014 and the regulations to
the characterizations of the nutritional value will be bind-
ing as of December 13, 2016.
Dr. Ilja Czernik
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“Sweets” on Trial
– Case Law in 2012
Introduction
Again, there have been numerous decisions about con-
fectionery trademarks in 2012. The following survey of
decisions concentrates on decisions of the Office of
Harmonization for the Internal Market (OHIM) and the
General Court of First Instance (EGC) which are all im-
portant for the appraisal of the likelihood of confusion of
trademarks. Further, also decisions of the German Fed-
eral Patent Court were taken into account.
The likelihood of confusion must be assessed globally,
according to the relevant public’s perception of the signs
and goods or services concerned and taking into account
all factors relevant to the circumstances of the case, in
particular the interdependence between the degree of
similarity between the mark and the sign and between
the goods or services identified (ECJ, C-39/97 - Canon;
C-342/97 - Lloyd Schuhfabrik Meyer).
Following these principles, the first part of this survey
outlines the decisions that affirm a likelihood of confu-
sion. The second part presents decisions denying a like-
lihood of confusion. Presenting such decisions, the sur-
vey deals with the respective signs in question and the
goods and services thereto where they relate to the con-
fectionery sector. The third part deals with decisions
about the distinctive character of trademarks.
The judgment of the German Federal Court of Justice of
December 13, 2012 - I ZR 217/10 - MOST-Pralinen ad-
dresses the subject of "Keyword Advertising” that was
already discussed in several decisions in 2011.
1. Likelihood of Confusion
The German Federal Patent Court (Decision of Septem-
ber 20, 2012 - 25 W (pat) 511/11) considered the word
trademark "Choco-Lofties" for "sugar confectionery,
chocolate and chocolate products, pastry, edible ices,
preparations for making these products" (Class 30) to be
confusingly similar to the word mark "CHOCO-SOFTIES"
for "fine pastry and confectionery especially chocolate,
chocolate products, chocolate-coated products, products
containing chocolate, chocolate marshmallows, biscuits,
edible ices” (Class 30). The Court affirmed the decision
of the German Patent and Trademark Office of cancella-
tion due to likelihood of confusion.
Likelihood of confusion was also affirmed between the
word-figurative trademark "Delicieux" registered among
others for "flavoring substances for
food, coffee and tea drinks" (Class 30)
and the older trademark "Delicia"
registered among others for "pastry
and confectionery" as well as "cocoa products (excluding
cocoa butter and cocoa fat), cocoa and chocolate" based
on the argument that flavoring substances for food are
being used for the production of pastry and confectionery
products. Furthermore, cocoa products also include co-
coa-based beverages. Because of this, the Board con-
firmed similarity to coffee and tea beverages. It argued
that the products were from the same type, fulfill the
same purpose and could have the same distribution
channels (Decision of the First Board of Appeal of April
18, 2012 - R 118/2011-1). The distinctive element in both
trademarks was the verbal component "Delicieux” or
"Delicia”, which from an overall impression was similar.
Likelihood of confusion was affirmed with respect to the
word mark "LIDL" and the older word mark "LIL" (Deci-
sion of the Second Board of Appeal of June 20, 2012 - R
1036/2011-2). Also, similarity was affirmed between the
products "ice for refreshment" and "frozen foodstuffs
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included in Class 30” as well as the services "Services
for providing food and drink, self-service restaurants,
snack bars, cafeterias, cafés, bars, preparation of meals
and dishes to take away, tea rooms, catering services,
grill restaurants" (Class 43) and including the following
products of Classes 29 and 30: "preserved, dried and
cooked fruits and vegetables, including the aforesaid
goods in sweet and/or sour (pickled) sauces; jellies,
jams, marmalades, fruit sauces and other sweet spreads;
eggs, milk and milk products included in Class 29, in
particular butter, cheese, fresh milk, long-life milk, cream,
yogurt; curd; powdered milk for food, desserts of yogurt,
curd and cream, processed nuts, coffee, tea, cocoa,
sugar, rice, tapioca, sago, artificial coffee; flour and prep-
arations made from cereals, in particular cereals, muesli
and whole wheat products; pasta; coffee, tea, cocoa or
chocolate-based drinks; coffee and cocoa preparations
for making alcoholic and non-alcoholic beverages, flavor-
ings for foodstuffs; bread, pastry and confectionery, con-
fectionery, ices; pudding; honey, treacle; yeast, baking
powder, starch for food,” arguing that these products are
usually used in restaurants.
In the opinion of the Fourth Board of Appeal (Decision of
July 10, 2012 - R 2131-4 and R 2149/2010-4), "jams, fruit
and vegetable pulp" (Class 29) are identical to "sweet
sandwich spreads" (Class 29). The word marks
"Nobless” and "CUISINE NOBLESSE) were therefore
judged to be confusingly similar.
The Second Board of Appeal considered
the figurative mark "VIVA" to be confusingly
similar to the figurative marks "viva Diges-
tive biscuits" (Decision of March 27, 2012 -
R 1490/2011-2 and R 1526/2011-2) as well
as "viva Sweet biscuits" (Decision of Octo-
ber 09, 2012 - Case R 2264/2011-2). The
Board found that there is an identity be-
tween the products "biscuits" (Class 30) as
well as "pastry and confectionery" on the
one hand to the services of class 43 "Providing food and
drink, especially in cafés, cafeterias, canteens, restau-
rants, snack bars and roadhouses” on the other hand.
The trademarks were also considered to be similar, as
parts of the relevant public would find the addition "Di-
gestive biscuits” as an indication to the products offered
under that trademark.
The Second Board of Appeal affirmed a likelihood of
confusion between the figurative
trademark "Pure Via" registered for
goods in Class 30, namely "Natural
sweetener; tabletop natural sweetener
for use in foods and beverages; natural sweetener in-
cluding sugar alcohols; natural sweetener featuring herb-
al extracts; stevia-based natural sweetener; and all the
foregoing being tabletop sweeteners", and the word
trademark "PURVIVA" registered for "sugar" (Class 30)
(Decision of August 1, 2012 - R 1966/2011-2) arguing
that the respective goods of the applicant contain "sugar"
which is a natural sweetener. The Board stated that for
the comparison the graphic part has to be neglected due
to the lack of originality and therefore it compared only
the words "Pure Via” and "PURVIVA”.
The Court of First Instance pointed out in a decision of
October 10, 2012 (T-333/11 – star foods II) that decisions
of the Court of First Instance in which trademarks were
judged to be similar could not be reversed by the Boards
of Appeal within the appraisal of a likelihood of confusion.
In that proceeding, in 2005, the plain-
tiff filed an objection against the regis-
tration of the community trademark
"star foods" based on the CTM "STAR SNACKS". The
Board of Appeal rejected this objection arguing that the
trademarks were not confusingly similar. That decision
was annulled by the Court of First Instance in its "star
foods I” decision. The Court decided among others that
there was a weak visual, a certain phonetic and a high
conceptual similarity between the trademarks. Thus, the
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trademarks were all in all similar. The Court did, howev-
er, not have to decide on the question of likelihood of
confusion. Having to decide on the question of likelihood
of confusion for a second time, the Board of Appeal re-
jected the objection again although, following the Court of
First Instance, the Board considered the signs to be
similar. But, it was argued that due to the generic charac-
ter of the words "food” and "snack,” the conceptual simi-
larity is of such minor importance that it must be disre-
garded in the evaluation of likelihood of confusion. The
Court of First Instance annulled that decision of the
Board. In the Court of First Instance's view, there is no
scope for the Board to weigh single factors of the consid-
eration of confusing similarity if the Court of First In-
stance had already decided on the question of similarity.
This decision has to be agreed with. The similarity of two
signs can only be answered consistently.
2. Rejection of likelihood of confusion
The Fourth Board of Appeal found on January 9, 2012
that there is identity between the goods "coffee, coffee
based drinks, coffee drinks with milk, coffee substitutes”
(Class 30) and "coffee” (Class 30)., The Board judged,
however, that there was no similarity between "coffee”
(Class 30) and "sweets, chocolate and chocolate prod-
ucts and pastries including all aforementioned goods with
coffee, coffee extracts and coffee flavors” as coffee is
consumed in a liquid form while sweets and chocolate
are consumed in a non-liquid form. Consumers would not
expect these goods to be produced by the same compa-
ny.
The similarity between the goods "flours” (class 30) as
well as "bread grain, feed grain, forage, seeds (Class 31)
on the one hand and services of "Certification of seeds,
grain, grain products, baking flour” (Class 42) as well as
"biscuits and cakes, pastries, crackers, bakery and bread
products, bread substitutes” (class 30) on the other hand
was declined by the Court of First Instance (Case T-
60/11)., Similarity or identity of goods was, however,
presumed for the goods of class 30 being "cereal flakes,
breakfast cereals, preparations made by cereals, pastries
and bakery products” and "biscuits and cakes, bakery
wares, cracker, bakery and bread products and bread
substitutes”.
Similarity and consequently likelihood of confusion was
denied by the Fourth Board of Appeal in a decision of
June 11, 2012 (R 329/2011-4) between the figurative
trademark "Supreme” for "edible ices”
(Class 30) and the figurative trademark
"Supreme” for "cheese and other milk
products (Class 29). In the Board`s point
of view, the circumstance that both
goods contain milk does not lead to a
similarity of the goods as the goods differ in their nature
and usage, are produced by different companies and
offered via different retail points. Further, the Board stat-
ed that sherbets and water ices are to be classified as
”edible ice”.
Without any further statement, the Fourth Board of Ap-
peal presumed in a decision of May 10, 2012 (R
2062/2010-4) identity between the goods "edible ices”
and "ice cream” but not between the goods "jellies, jam,
compotes, eggs, milk and milk products, edible oils and
edible fats” (Class 29) and "ice cream” (Class 30).
3. Distinctive Character
In 2012, there were no constitutive decisions concerning
the distinctive character of trademarks in the sector of
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January 2013
confectionery. Existing case law dealing with the distinc-
tive character of trademarks was, however, confirmed in
several decisions. In a decision of May 22, 2012, the
Court of First Instance stated that there was no likelihood
of confusion between the following figurative trademarks:
The Court of First Instance followed settled case law,
repeating that likelihood of confusion has to be evaluated
by looking at the overall impression of the sign in ques-
tion, taking into account its image, phonetics and mean-
ing. In doing so, the more distinctive and dominating
elements must be taken into account. In the Court of First
Instance's opinion, the word element "Premium" does
only have little distinctive character. Though it does not
describe certain characteristics of the product, the word
is to be understood by the relevant public only as an
advertising statement. Further, the Court of First Instance
stated that due to the figurative differences of the respec-
tive signs there was no likelihood of confusion.
According to a decision of the German Federal Patent
Court of May 30, 2012 (25 W (pat) 62/11), the figurative
trademark "Cereal Crunch” is not distinctive for "sugar
products, chocolate and
chocolate products as
well as confectionery” as
the sign illustrates an
indication of quality within the meaning "containing grain
and crunchy”. The relevant public would not understand
the sign as an indication of origin. Rather, the public
would just acknowledge the mark as a description of the
product. The trademark registration was declined.
4. Keyword Advertising
The constitutional principles of a trademark infringement
by using AdWords have been defined by the German
Federal Court of Justice in 2011 in the decisions
"Banabay II” (Decision of January 13, 2011 – ZR 125/07)
and "Impulsonline” (Decision of January 13, 2011 – ZR
46/08), the German Federal Court of Justice specified in
the decision "MOST Pralinen” its legal opinion that a
damnification of a trademark in its function as reference
of origin is eliminated - as a basic principle - if the adver-
tisement appears in the commercial block (fig. red high-
light) separated from the natural hit list (fig. green high-
light) and if it does not show the trademark itself or any
other reference to the trademark owner or the branded
goods.
In the case at issue, the advertiser - the owner of an
online shop for gifts, pralines and chocolate - had placed
an advertisement using AdWords. He booked the term
"pralines" as an AdWord and further activated the Google
AdWord option "broad match". This list also contained
the term "most pralines”.
Whenever a user typed the term "MOST pralines" into
the Google search bar, the following advertisement ap-
peared in the advertisements on the right-hand side:
"Pralines/Wines, Pralines, delicate food, gifts/enjoying
and giving!/www.feinkost-geschenke.de.".The advertiser
did not offer any original "MOST" pralines in his shop.
"MOST" is protected as trademark, including for pralines
and chocolate.
The German Federal Court of Justice confirmed its pre-
vious decisions and declined an infringement of the reg-
istered trademark "MOST”. There is no requirement that
the advertisement contains a reference or any indication
of the absence of an economic link between the adver-
tiser and the trademark owner. The sole use of a generic
product name (pralines) cannot constitute trademark
infringement.
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Conclusion
The jurisdiction of the German Federal Court of Justice
concerning infringements by using AdWords seems to be
settled. Trademark owners who would like to take legal
action against the use of AdWords should examine the
advertisement in detail. In addition, search engine opti-
mization (SEO) and the question of how to design search
engine advertising are becoming more and more im-
portant to trademark owners.
It has to be pointed out that German jurisdiction deviates
from foreign jurisdiction on infringements of trademarks
by the use of AdWords, including from decisions of the
Austrian Supreme Court of Justice (Decision of June 21,
2010 - 17 Ob 3/10f BergSpechte) and in France by the
Cour de Cassation (Decision of July 13, 2010 – CNRRH).
Austria and France postulate higher requirements to
the arrangement of advertisements which could be
important for cross-border operating companies which
own Community trademarks.
Dr. Thomas Müller
Jan-Dierk Schaal, LL.M. [email protected]
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Practice Group Intellectual Property Law / Competition Law Dr. Dorothee Altenburg
1
Nikolaus Bertermann2
Hanna Bickel, LL.M. Dr. Claudia Böckmann
1
Dr. Markus Brock1
Dr. Ilja Czernik Georg Delhaes Markus von Fuchs, LL.M.
1
Lena Jessi Heller Dr. Magnus Hirsch
1
Dr. Oliver Hornung Dr. Daniel Kaboth
1 2
Margret Knitter, LL.M.1
Stefan Kridlo Christoph Mayerhöffer Dr. Thomas Müller Dr. Karolin Nelles, LL.M. Dr. Andreas Peschel-Mehner Marc Pussar Jan-Dierk Schaal, LL.M.
1
Stefan C. Schicker, LL.M.1 2 3
Dr. Konstantin Wegner, LL.M. Dr. Anne Zoll
1 Certified IP Lawyer
2 Certified Lawyer for IT, Internet and E-Business
³ also Solicitor in England and Wales
Company Information SKW Schwarz Rechtsanwälte Steuerberater Wirtschaftsprüfer Partnerschaft, AG München PR 884 Represented by: Prof. Dr. Mathias Schwarz Editor: Margret Knitter, LL.M. E-Mail: [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 40212 Düsseldorf Steinstraße 1/Kö T +49 (0) 221.82 89 59-0 F +49 (0) 221.82 89 59-60 20095 Hamburg Ferdinandstraße 3 T +49 (0) 40.33 40 10 F +49 (0) 40.33 40 15 21
60598 Frankfurt/Main Mörfelder Landstraße 117 T +49 (0) 69.63 00 01-0 F +49 (0) 69.63 55 22 80333 Munich Wittelsbacherplatz 1 T +49 (0) 89.286 40-0 F +49 (0) 89.280 94-32
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