IP Newsletter January 2013 - SKW Schwarz · PDF fileKnoppers Chocolate Mouse of August Storck KG On the other hand, ... ed that the Merci bar is essentially made up of the shape of

JUNI 2009

IP-to-Date Special

Confectionery Industry Current Information about Trademark and Competition Law in Europe

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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.

[email protected]

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

[email protected]

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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

[email protected]

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.

[email protected]

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-


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.

JUNI 2009


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January 2013

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-


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

[email protected]

JUNI 2009


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January 2013

“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

JUNI 2009


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January 2013

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

JUNI 2009


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January 2013

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

JUNI 2009


Page 17/19

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.

JUNI 2009


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January 2013

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

[email protected]

Jan-Dierk Schaal, LL.M. [email protected]

JUNI 2009


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January 2013

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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Registered at: Rechtsanwaltskammern Berlin, Düsseldorf, Frankfurt a.M., Hamburg and Munich

The rules of professional conduct can be downloaded from http://www.brak.de in the section"Berufsrecht", Information duties according to Section 5 German Telemedia Act.

© SKW Schwarz 2013

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