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A designation in the headline of a brochure or online shop advertisement is usually perceived as an origin-referencing, trademark-like use. The sign used can then be perceived as a second or sub-brand in addition to the umbrella brand and thus acts as an independent distinctive feature alongside the umbrella brand. If it is identical or similar to the protected trade mark, this creates an unlawful risk of confusion.
The trade mark proprietor had applied for an interim injunction to prohibit the subsidiary of a large retail group from offering non-alcoholic drinks for sale under a name that contained the umbrella brand of the product there, as well as a second or sub-brand. The second or sub-brand was almost identical to the trade mark of the trade mark proprietor.
LG Munich I: Purely a statement of taste
Munich Regional Court I did not want to follow this view and dismissed the application because, in the court’s opinion, there was a connection to the flavour of the drink, and the specific design of the offer heading also argued against trademark use (LG München I, Beschluss v. 15.2.2021, Az.: 33 O 1074/21).
However, the link made by the court to the flavour already raised questions because the actual (indeed descriptive) flavour was indicated separately in the relevant offer directly under the article heading.
OLG Munich: In headline referring to origin
On appeal by the trade mark proprietor, the Munich Higher Regional Court then overturned the decision of the lower court and issued the interim injunction as requested (OLG München, Beschluss v. 24.3.2021, Az. 29 W 358/21). In this regard, the Higher Regional Court first stated that, in the case of an offer for food (for example in an online shop), a designation in the article heading or if it is emphasised in the printing in such a way that it can be interpreted as a heading, is regularly perceived by the relevant public as an indication of origin – i.e. as a trade mark. In addition to the umbrella brand, this also applies to the other components of the designation – if these are distinctive secondary or sub-designations.
In this specific case, according to the Munich Higher Regional Court, not a flavour statement and therefore not a purely descriptive use
Secondary or sub-designations can also be purely descriptive in the beverage sector if they solely depict the flavour or certain ingredients and therefore cannot be attributed to a specific company by the public. However, this was not the case here. The OLG rightly found that the sign used could by no means be understood as an indication of flavour. Especially when the flavour is explained separately in the advertising text. The sign was therefore considered by the court to be independently distinctive and ultimately infringing the trade mark.
(Disclosure: LHR represented the applicant)
This article was written by our freelance author Josef Bordat. It is part of our series ‘Reports from the parallel world’. Here, authors from other specialist areas take a look at the theory and practice of law. Unlike our other specialist articles, the articles do not look at events and legal cases from a legal perspective, but from a completely different angle. It is up to the reader to decide from which angle. In our opinion, it will always be interesting.
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