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In a decision in preliminary injunction proceedings, Frankfurt Regional Court dealt with the admissibility of advertising claims and emphasised the requirement in accordance with Section 5 (1) sentence 2 UWG: Always stick to the truth!
This also applies to advertising with a long company tradition as well as with trade mark protection – with regard to all possible, not far-fetched interpretations.
A company advertised on its website with a ‘100-year tradition’ that certain employees could ‘look back on’ and with the statement ‘…is a brand of B. GmbH’. As both advertising statements allowed for interpretations that did not correspond to the true facts, they were misleading for the consumer and therefore inadmissible according to the Frankfurt Regional Court (LG Frankfurt, Beschluss v. 9.8.2019, Az. 2-03 O 324/19, nicht rechtskräftig).
False advertising with a long tradition and brand protection
A consultancy firm active in the property industry, which was founded in 2003, advertised on its homepage, among other things, that certain, explicitly named employees were entitled to a ‘look back on over 100 years of tradition in the property sector’ könnten. The company also used the popular brand advertising statement ‘…is a trade mark of B. GmbH‘ but without being the owner of the corresponding trade mark.
The named trade mark was indisputably not registered in a trade mark register – neither for the advertising company nor for a third party. As both advertising statements allowed consumers to interpret them in ways that did not correspond to the truth, a competitor objected to them. He saw this as an infringement of competition law and called on the company to cease and desist.
In the meantime, the company has at least amended the statement regarding the alleged trademark protection, but has not issued a cease-and-desist declaration. Instead, it defended itself by stating that it was expressly not the company itself that could look back on its own 100-year tradition, but rather the named employees of the company. And this only cumulatively through other activities in other companies. Moreover, the relevant public understands the term ‘trademark‘ not the ’trade mark in the legal sense’, but a ’product‘. In the end, the competitor was forced to apply for a temporary injunction at the regional court in Frankfurt am Main.
Don’t make the company older than it is
The Chamber seised agreed with the applicant’s arguments and prohibited the defendant company from using the ’100-year tradition‘ to which certain employees ’look back‘ could. It agreed with the applicant’s view that this constituted misleading and therefore inadmissible age advertising pursuant to Section 5 (1) No. 3 UWG. This created the false impression that the company responsible for the website itself had a 100-year tradition. In reality, the company itself was indisputably much younger.
It may also be possible to consider the variant interpretation that the 100-year tradition that the named employees can look back on relates to them and not to the company. However, in the applicant’s opinion, the advertising statement is also inadmissible in the case of such an interpretation because it is untrue. In particular, previous activities of the named employees, in which they may have once worked in a corresponding (traditional) company, could not be used to support the advertising statement.
It should be noted that the term ‘tradition’ does not permit a mere aggregation of periods in which they may have been individually active in different companies, as it is understood by the public in this context as an uninterrupted company tradition.
Moreover, according to established case law, in the case of ambiguous statements, it is sufficient to justify a claim for injunctive relief if only one of several possible interpretations fulfils the requirements for a claim (vgl. auch OLG München, Urteil v. 9.7.2009, Az. 29 U 1852/09).
Advertising with ‘…is a trade mark of…’ is only available to trade mark owners
The claim placed on the company’s website that the company is the owner of a trade mark (‘…is a trade mark of B. GmbH’), may be sonorous, but according to the Frankfurt judges it is misleading within the meaning of Section 5 (1) sentence 1 no. 3 UWG and therefore inadmissible pursuant to Section 3 (1) UWG.
The Board also agreed with the applicant’s arguments in this respect. Accordingly, it was undisputed that the company had not become the proprietor of the trade mark, in particular not by virtue of registration of the trade mark in a trade mark register. The claim ‘…is a trade mark of B. GmbH’ would be understood by the relevant public in the legal sense and in such a way that the company advertising with the trade mark would not be entitled to use the trade mark. Trademark protection to the named sign, but this was not true. The Chamber thus followed the established case law according to which it is misleading to advertise with a trade mark protection that does not exist in this form (vgl. auch BPatG, Beschluss v. 21.1.2013, Az. 27 W 553/12 – grillmeister; BGH Urteil v. 26.2.2009 – I ZR 219/06 – Thermoroll).
When using the phrase ‘…is a trademark of…’ be very precise, by the way: In another case, the Higher Regional Court of Frankfurt recently ruled that a company could not be held liable by the wording ‘…is a brand of the’ misleading and therefore unfair advertising, as it was not itself the trade mark owner. Even the fact that the company had an exclusive licence to the trademarks and was affiliated with the trademark owner and licensor under company law did not change the inadmissibility of the advertising statement (OLG Frankfurt, Urteil v. 8.8.2019, Az. 6 U 40/19).
In the event of non-compliance, the company faces a fine of EUR 250,000, or alternatively imprisonment for up to six months. The amount in dispute was set at EUR 35,000. The order is not final and has been issued without reasons. The defendant has applied for an order to set a deadline for the applicant to bring the action on the merits. It can therefore be assumed that the court will deal with the issue again in the near future and then give more detailed reasons for its decision.
(Disclosure: Our law firm represented the applicant before the Frankfurt Regional Court).
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