Court rulings in the field of trademark law

The following sites contain a selection of court rulings or their key points grouped according to the area of law that they deal with. Apart from the key points, there are also statements of the facts of the cases and comments on the rulings. Comments reflect our opinion and cannot claim to be complete. Please note that each ruling is based on a particular and individual case. Therefore, it is neither possible nor sensible to make generalisations. Rather, it is recommended to have the facts of individual cases revised by an attorney-at-law.

Trademark law in Germany and the European Union (EU) has been shaped by various landmark rulings from national courts, the Federal Court of Justice (BGH - Bundesgerichtshof), the European General Court (EGC - formerly Court of First Instance, CFI), and the Court of Justice of the European Union (CJEU - Europäischer Gerichtshof, EuGH). These rulings clarify key principles such as distinctiveness, likelihood of confusion, reputation protection, and enforcement.

1. BGH – "POST" Trademark Case (I ZB 97/09, 2012)

Parties: Deutsche Post AG

Legal Issue: Can the word "POST" be exclusively registered as a trademark?

Court Ruling:

• The Federal Court of Justice (BGH) ruled that "POST" is a generic term for postal services and lacks distinctiveness.
• Deutsche Post could not claim exclusive rights to "POST" because the word was commonly used in the sector.

Implications:

• Descriptive terms cannot be monopolized.
• Generic words are not protectable unless they acquire secondary meaning.

What German Trademark Agents Do:

• Conduct trademark searches to assess distinctiveness before filing.
• Advise clients on potential refusals based on generic or descriptive nature.

2. BGH – "Sparkassen-Rot" (Red Color for Savings Banks) (I ZR 228/12, 2016)

Parties: Deutscher Sparkassen- und Giroverband (DSGV) vs. Santander Bank

Legal Issue: Can a color (red) be a protected trademark for financial services?

Court Ruling:

• The BGH confirmed that "Sparkassen-Rot" (red) had acquired secondary meaning through extensive use.
• Santander Bank was prohibited from using a similar red shade.

Implications:

• Colors can be protected as trademarks if they have acquired distinctiveness.
• Brand identity based on color schemes is legally enforceable.

What German Trademark Agents Do:

• Advise on non-traditional trademarks like colors and sounds.
• File evidence of secondary meaning to strengthen claims.

3. BGH – "Lindt Gold Bunny" (I ZR 139/20, 2021)

Parties: Lindt & Sprüngli vs. Riegelein

Legal Issue: Can the gold foil wrapping of a chocolate bunny be a protected trademark?

Court Ruling:

• The BGH ruled that the gold foil wrapping had acquired secondary meaning and was protectable.
• Riegelein’s gold-wrapped chocolate bunny was ruled infringing.

Implications:

• Product packaging can be a protectable trademark.
• Acquired distinctiveness is critical for design-based trademarks.

What German Trademark Agents Do:

• Help brands prove acquired distinctiveness.
• Monitor and enforce packaging-related trademarks.

4. CJEU – "KitKat Shape" (C-215/14, 2018)

Parties: Nestlé vs. Mondelez (formerly Cadbury)

Legal Issue: Can the shape of a four-finger chocolate bar be a trademark?

Court Ruling:

• The CJEU ruled against Nestlé, stating that the KitKat shape lacked distinctiveness.
• Nestlé failed to prove EU-wide recognition.

Implications:

• Shapes require strong market recognition for protection.
• Trademarks must have distinctiveness in all EU states.

What German Trademark Agents Do:

• File shape trademarks with sufficient proof of acquired distinctiveness.
• Defend clients in invalidation proceedings.

5. BGH – "Most-Pralinen" (Chocolate Trademark) (I ZR 217/10, 2013)

Parties: Manufacturer of "MOST" chocolates vs. competitor

Legal Issue: Was "MOST" distinctive enough for chocolate products?

Court Ruling:

• The BGH rejected the trademark due to lack of distinctiveness.
• "MOST" was deemed a common word and not distinctive for chocolates.

Implications:

• Generic terms are weak trademarks.
• Distinctiveness is the key requirement for trademark protection.

What German Trademark Agents Do:

• Assess distinctiveness before filing.
• Appeal refusals with supplementary evidence.

6. CJEU – "Google AdWords Case" (C-236/08, 2010)

Parties: Google vs. Louis Vuitton

Legal Issue: Can third parties use trademarked keywords in online ads?

Court Ruling:

• Google is not liable if trademarks are used as AdWords keywords.
• Advertisers must avoid misleading consumers.

Implications:

• Keyword advertising is allowed, but trademark owners can challenge misuse.

What German Trademark Agents Do:

• Advise clients on Google Ads trademark violations.
• File complaints against misleading keyword use.

7. CJEU – "BMW vs. Autohändler" (C-63/97, 1999)

Parties: BMW vs. Independent Car Dealer

Legal Issue: Can a non-authorized dealer use "BMW" in advertising?

Court Ruling:

• A dealer can use the trademark only to describe resale of BMW cars.
• Misleading use was prohibited.

Implications:

• Descriptive use is allowed, but must not create confusion.

What German Trademark Agents Do:

• Guide clients on fair use of trademarks.
• Prevent dilution through unauthorized resale use.

8. CJEU – "Apple Store Layout" (C-421/13, 2014)

Parties: Apple Inc. vs. Competitor

Legal Issue: Can a store layout be trademarked?

Court Ruling:

• Apple’s store design was a valid 3D trademark.

Implications:

• Retail environments can be protectable trademarks.

What German Trademark Agents Do:

• Register unique store layouts as trademarks.

9. BGH – "VW vs. Tuning Company" (I ZR 86/13, 2015)

Parties: Volkswagen vs. Tuning Company

Legal Issue: Can a tuning company use "VW" in marketing?

Court Ruling:

• The tuning company could describe its services but not as a primary brand.

Implications:

• Trademarks cannot be misleadingly used in advertising.

What German Trademark Agents Do:

• Prevent unauthorized use by third parties.

10. CJEU – "Red Bull Blue-Silver" (T-101/15, 2017)

Parties: Red Bull vs. EUIPO

Legal Issue: Can blue-silver color combinations be trademarked?

Court Ruling:

• Red Bull’s claim was invalid due to vague description.

Implications:

• Color trademarks must be precisely defined.

What German Trademark Agents Do:

• Ensure precise descriptions for non-traditional trademarks.

Conclusion

These rulings demonstrate the complexity of German and EU trademark law. German Trademark Agents play a crucial role in registration, enforcement, litigation, and strategic brand protection.