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Annual Review 2017

Intellectual Property / Competition Law

“Sweet marks” – current case law on German and

European Level

Margret Knitter, LL.M. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

Use of Confectionery Trademarks in a way as to preserve

Trademark Right – Limits for Use in a Modified Form

Georg Delhaes . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

Registrability of Slogans

Christina Bauer, LL.M. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18

Out of sight out of mind?

An obligation to recall products may also exist

in the case of injunctive relief claims

Dr. Sascha Pres . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20

Pitfalls in food labeling

Dr. Dorothee Altenburg . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

Chocolate, milk and honey –

News on confectionery labeling

Dr. Magnus Hirsch, Stephanie Pfaff . . . . . . . . . . . . . . . . . . . . . 26

Branded Content – The law strikes back

Dr. Ilja Czernik, Corinna Sobottka . . . . . . . . . . . . . . . . . . . . . . . 28

IT & Digital Business

Field report on GDPR implementation projects

Dr. Stefan Peintinger, LL.M. . . . . . . . . . . . . . . . . . . . . . . . . . . . 31

Commercial and Distribution Law

Cross-border sales contracts:

Don’t forget the choice of law rules!

Oliver Korte . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33

Employment Law

The new Pay Transparency Act

Thomas Wittmann . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34

Tax Law

The end of using license boxes is near!

Heiko Wunderlich, Margret Knitter, LL.M. . . . . . . . . . . . . . . . . . 37

Confectionery Industry Special

Current case law on Trademark, Design and Competition Law, IT & Digital Business, Commercial and Distribution Law, Employment Law as well as Tax Law in Europe

Overview of Topics:

2

Current case law on Trademark, Design and Competition Law, IT & Digital Business, Commercial and Distribution Law,

Employment Law as well as Tax Law in Europe

Confectionery Industry Special Annual Review 2017


The EUIPO also qualified the term BIO?LOGISCH! as a purely

promotional, laudatory statement, which highlights in particular one

characteristic of the goods, the fact that it is composed of biolog-

ically cultivated ingredients . The lack of spaces did not help the

mark to become registrable .6

WAFER BITES by Zott was rejected at EU level for puddings, ice

cream, preserved and fine baked goods, as well as rice pudding .

The fact that, in theory, for English-speakers wafer bites could also

be understood as an expression from the computer industry played

no role because these are food products . It was stated that the

brand was of a clearly descriptive nature with regard to the prod-

ucts, in particular because puddings, ice cream, and rice pudding

were offered with wafers .7

A similar application, for MILK BITS, was rejected by the Federal

Patent Court on the same grounds . It was considered that German

consumers would understand the MILK BITS to mean “milk bites”

and nothing else . This was considered purely descriptive for cere-

als, cereal bars, and similar products .8

The registration of SOFT CAKE9 also failed . It was the view of

the Federal Patent Court that the phrase “soft cake” is used as

the name of a product category, i .e ., small flat cakes made of soft

dough with a fruit filling and a chocolate covering . This means that

the sign is not suitable to show the origin of the product .

Is everything that is included TRUE? Not for the Trademark Office:

consumers were said to connect the word TRUE with ready meals

and snacks made from fruit, vegetables, and cereals that do not orig-

inate from synthetic production . It was stated that the word only pro-

vides consumers a promotional statement that is intended to convey

a supposedly high level of quality without referring to the company of

origin . The registration of the mark was therefore refused .10

6 EUIPO Board of Appeal, Decision dated 08/22/2017, R 466/2017-1 – BIO?LOGISCH! .

7 EUIPO Board of Appeal, Decision dated 06/09/2017, R 73/2017-5 – Wafer Bites .8 Federal Patent Court, Decision dated 11/22/2016, 24 W (pat) 522/16 – Milk Bits .9 Federal Patent Court, Decision dated 11/02/2016, 24 W (pat) 556/16 – Soft Cake . 10 EUIPO Board of Appeal, Decision dated 05/31/2017, R 552/2017-5 – TRUE .

Margret Knitter, LL .M .

“Sweet marks” – current case law on German and European Level

1. Judgments on registrability

A trademark is characterized by what is implanted in the minds of

consumers in both words and images . Trademarks are like the fig-

urehead for the company, like a gingerbread heart hanging around

one’s neck . But there are lot of places that sell plain generic gin-

gerbread hearts, so when is there a sufficient level of distinctive

character to be able to overcome the hurdle of registrability?

A sign has distinctive character when it is perceived by the public

as a specific indication of the product’s origin . Then it also fulfills the

main purpose of a trademark, namely to identify the origin of the

marked goods and services .

1.1 Distinctive character of word marks

Mom and grandma are the best! – not according to the European

Union Intellectual Property Office (EUIPO), though . The signs Beste

Oma1, Bester Opa2, Beste Mama3, Bester Papa4 and even

Beste Freundin5 (in English: Best Grandma, Best Grandpa, Best

Mom, Best Dad, Best Friend) were denied the distinctive character

for confectionery, among other things . The consumer would under-

stand the words “best” and “dad,” for example, as a mere promo-

tional message to mean that the gift was given by the “best dad”

or to mean that the person receiving the gift was “the best .” The

mark applied for did not contain any elements beyond an obviously

advertised and laudatory meaning that are so striking to allow the

relevant public to keep the mark in mind as designation of origin .

1 GC, Judgment dated 07/15/2017, T-421/16 – Beste Oma .2 GC, Judgment dated 07/15/2017, T-449/16 – Bester Opa .3 GC, Judgment dated 07/15/2017, T-422/16 – Beste Mama .4 GC, Judgment dated 07/15/2017, T-451/16 – Bester Papa .5 GC, Judgment dated 07/15/2017, T-452/16 – Beste Freundin .

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food product to which the claim refers, namely that they are “crispy”

and are in the shape of hearts .

The term CRUNCHY is also understood by average German con-

sumers to mean “crispy, crunchy”, according to the Trademark

Office in another case . It is a typical quality and characteristic de-

scription in the area of foodstuffs in connection with “pastries and

confectionery, cookies, chocolate bars, waffles .”17

In the decision by the EUIPO on the word mark ROCKSLIDE

BROWNIE or baked goods, it was presumed that at least a sig-

nificant portion of the relevant audience understood the colloquial

term “ROCKSLIDE BROWNIE” as a description of a certain kind of

brownie . The registration was therefore rejected .18

The word BIERKUGEL (beer ball), which is usually associated with

a ball-shaped boiled sausage, is not descriptive of the goods in

question, i .e ., milk, milk products, and ice cream powder and there-

fore is distinctive for these products . The sign is also not deceptive

for these products . The milk and other products in question, which

are regularly offered in milk containers, bottles, or cartons, are so

different from a sausage in the shape of a ball that there could be

no misleading . The registration was therefore granted trademark

protection .19

Lindt did not succeed in having the

mark EXCELLENCE protected as a

word mark for chocolate . After the EU

Trademark Office did not recognize any

distinctive character (the mark only de-

scribed the excellent quality/excellence

of the chocolate), Lindt attempted to

prove that the mark had acquired dis-

tinctive character through use . This is

difficult and expensive, in particular for

the EU . This is because it has to be

proven that the mark was used as a trademark and as a result of

this use, the mark became suitable to identify the goods or service

17 Federal Patent Court, Decision dated 11/02/2016, 24 W (pat) 558/16 – Crunchy .18 EUIPO Board of Appeal, Decision dated 03/02/2017, R 317/2016-5 –

ROCKSLIDE BROWNIE .19 Federal Patent Court, Decision dated 03/03/2017, 28 W (pat) 15/15 – Bierkugel .

Lidl’s FRUIT & BERRY tea trademark is not distinctive, either, be-

cause it is purely descriptive in the view of the EUIPO . It was held

that the market is overflowing with tea products with a fruit or berry

flavor .11

With regard to the Intersnack application #CHIPS for goods

in classes 29 and 30, the Board of Appeal of the EUIPO states:

#descriptive #notdistinctive #reject #notregistrable .12 “Hash-

tags” (“#”) serve the purpose of emphasizing terms, in particular

in electronic texts . In connection with the descriptive term, it was

said that they purely serve the purpose of emphasizing (tagging) a

descriptive term .

The word combination KESSEL CHIPS (kettle chips) was also

rejected .13 It was alleged that consumers would only see this as

referring to products with the shape of chips baked raw in a large

metal container .

Registration of the word combination BÄCKERGLÜCK (baker’s

joy) was also rejected as a result of a lack of distinctive character

for pastries and confectionery .14 The combination of the word “joy”

used promotionally with another keyword, here: “baker,” would be

understood by consumers in the sense that the pastries and con-

fectionery in some way make people happy, for example because

of their particular quality .

The Trademark Office also rejected BAYERNHERZ (Bavarian

heart) for pastries and confectionery because of its descriptive na-

ture .15 The word “Bayern” refers to the geographical origin and the

word “heart” refers to the shape of the product . The fact that some

consumers associate “Bayern” with the mental strength of FC Bay-

ern Munich was stated to be irrelevant . Multiple meanings do not

generally help marks to be registrable if one of the meanings is of a

purely descriptive nature .

The Federal Patent Court rejected the application for KNUSPER-

HERZEN (crispy hearts)16 because it was descriptive . The mark

allegedly consisted exclusively of information that describes the

11 EUIPO Board of Appeal, Decision dated 05/11/2017, R 197/2017-4 – Fruit & Berry .12 EUIPO Board of Appeal, Decision dated 03/22/2017, R 1659/2016-4 – #CHIPS . 13 Federal Patent Court, Decision dated 11/29/2016, 28 W (pat) 533/15 – Kessel Chips .14 Federal Patent Court, Decision dated 02/14/2017, 25 W (pat) 515/17 – Bäckerglück . 15 Federal Patent Court, Decision dated 02/14/2017, 25 W (pat) 525/17 – Bayernherz . 16 Federal Patent Court, Decision dated 10/27/2016, 25 W (pat) 541/14 –

Knusper Herzen .

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“A rectangular, single yellow-brown background under the word ele-

ment is by no means unusual, but rather is trivial,” stated the EU-

IPO .22 The complaint in the “Der Butterkeks” (the butter cookie) case

by Bahlsen was therefore rejected . The yellow-brown color was in-

tended to be reminiscent of the color of butter cookies and therefore

rather underlined the statement made by the word element rather

than deviating from it . The two red braid patterns look like known

borders . Overall, the perception of the public addressed would be

determined by the descriptive statement of the word element “DER

BUTTERKEKS .” The mark applied for was therefore excluded from

registration .

According to the EUIPO, when consum-

ers see “my CHIPSBOX,”23 they auto-

matically think of their own box of chips .

This means that the mark gives the im-

pression that the goods and services that

are the subject matter of the proceedings

are chips that come in a box . Neither the box that is shown and that

underlines this statement, nor the red-white-black color combina-

tion are able to distract consumers from the clear statement “my

CHIPSBOX .”

The graphic representation of the word

sequence “Mein Menü” (my menu) is no

more than just a normal commercial de-

sign medium for goods in classes 29 and

30 .24 The graphic of the mark, which is

limited to a representation of the word

sequence “Mein Menü” in chalk on a board with a frame, is not

grounds for distinctive character .

22 EUIPO Board of Appeal, Decision dated 06/29/2017, R 114/2017-4 – DER BUTTERKEKS .

23 EUIPO Board of Appeal, Decision dated 06/06/2017, R 1507/2016-1 – my CHIPSBOX .

24 Federal Patent Court, Decision dated 03/03/2017, 28 W (pat) 510/16 – Mein Menü .

as originating from a certain company and therefore to fulfill the

major function of the trademark . It must also be the case that the

public does not only understand the mark as a pure sign of quality .

For this purpose, Lindt submitted extensive usage documentation .

In the view of the Board of Appeal of the EU Trademark Office,

these were not sufficient to prove usage in the English and French

areas of the European Union . The board objected amongst other

things that no information was provided on market share or that the

market share was too low . In addition, the simple fact that the mark

has been used for a long time does not mean that it can be con-

cluded that consumers perceive it as a trademark .20

1.2 Distinctive character of word and figurative marks

The decisions over the past year have strengthened the trend to-

ward graphic additions to trademarks that consist of a purely de-

scriptive word component not being able to help them achieve

registrability . In particular graphic additions that are usual in the

industry (e .g ., special upper case/lower case, exclamation mark,

use of usual symbols such as a heart) or that only take up the de-

scriptive meaning of the word component do not help . In addition,

marks that already focus optically on the word element are not con-

sidered to be distinctive . In detail:

It is understandable that the word combi-

nation “Simply good” is purely descriptive

for food products of all kinds . The slogan

only states that the goods in question are

simply good, i .e ., they have a good flavor

and freshness . The EUIPO is also of the opinion that the graphic

elements do not help the mark to be distinctive . They are allegedly

simple and would be perceived by the relevant public as purely

decorative and not as proof of origin . In particular, the use of a heart

is a usual instrument in advertising in order to convey affection and

friendliness .21

20 EUIPO Board of Appeal, Decision dated 11/24/2016, R 620/2016-5 – EXCELLENCE .21 EUIPO Board of Appeal, Decision dated 07/14/2017, R 2357/2016-1 – SIMPLY

good .

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of a word or figurative mark . This is clearly demonstrated by the

following decisions . A trademark that shows the external appear-

ance of a product or its packaging must deviate significantly from

the norm in order to perform the function of identifying the origin

of the product and consequently be able to display the necessary

distinctive character .

The attempt by August Storck to protect

Knoppers packaging as a trademark

throughout the EU failed after 13 years of

proceedings . In principle, the packaging

is suitable to identify the origin of the

goods . In the view of the Court of Justice of the European Union

(ECJ), the light blue, white, and grey colors of Knoppers packaging,

however, is not the basis for the decision for the chocolate waffle

pastry . The diagonal curving line, which looks like a snow-covered

mountain against a blue sky, is seen only as a decorative element

by consumers . The shape of the packaging is also usual .27 In indi-

vidual EU Member States, i .e ., in Germany, on the other hand, the

packaging is protected as a national trademark .28

Bahlsen failed to manage to bag a

trademark for its yellow and red packag-

ing for cookies .29 The Board of Appeal of

the EUIPO repeated that consumers in

principle do not consider packaging with-

out graphic or word elements as a trade-

mark . It said that neither the shape nor

the colored design of the packaging

made it distinctive . Rather, it is an ex-

tremely simple design . It considered the base color yellow to be a

natural color for the packaging of food products such as cookies

and baked goods because it is close to the natural color of the

product inside the packaging and is therefore purely descriptive .

27 GC, Decision dated 05/10/2016; ECJ, Judgment dated 05/04/2017, C-417/16 P – Knoppers packaging .

28 DE mark 30 2013 021 300, owner: August Storck KG, 13403 Berlin, DE29 EUIPO Board of Appeal, Decision dated 04/06/2017, R 1740/2016-4 –

PRESENTATION OF PACKAGING (Bahlsen) .

With regard to “BELGIAN TRADITIONAL

BISCUITS,” too, the Board of Appeal of

the EUIPO reached the conclusion that

the graphic elements and the simple de-

scriptive words were not distinctive .25

The mark was considered to consist of a

combination of words in general use and

graphic elements that further underpin

the meaning of the mark for the goods in question in the registration .

The word mark/figurative mark “WE

FRUIT . From Field to Cup” was also

classified as not being registrable .26 The

public addressed would understand this

as purely an advertising slogan . The

heart-shaped strawberry is recognized as the symbol for the verb

“love .” The slogan “From field to cup” was said to be a variation on

the English expression or advertising slogan “From field to fork,”

which was developed by English coffee suppliers and has been

used a lot in English-speaking countries . In German advertising lan-

guage, corresponding slogans are often also used for groceries

(such as: “Fresh from the field to the table”) .

1.3 Distinctive character of marks consisting of a shape

Companies repeatedly try to register their product designs as 3D

marks . The following decisions show, however, that this remains

difficult . In theory, the criteria for the assessment of the distinctive

character of marks that consist of the appearance of the goods

themselves or their packaging are no different or stricter than those

for the other categories of marks . According to legal precedent,

however, a 3D mark of this kind is not necessarily perceived by the

public addressed in the same way as a word or figurative mark that

is independent of the appearance of the goods . As a result of the

fact that it is not possible to sell food products without packaging,

consumers primarily attribute to it the simple function of packaging .

The consumers usually do not make any conclusions about the

origin of goods from the external appearance of packaging if there

are no graphic or word elements . Therefore, it can be more difficult

to prove the distinctive character of a mark of this kind than that

25 EUIPO Board of Appeal, Decision dated 05/25/2017, R 272/2017-2 – BELGIAN TRADITIONAL BISCUITS .

26 Federal Patent Court, Decision dated 04/27/2017, 25 W (pat) 545/17 – WE FRUIT .

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(b) Lindt made a comprehensive submission this time of evidence

of the public reputation of the mark, in particular showing sales and

advertising costs for eight countries, as well as trading activities

without figures in a further nine countries; the results of opinion

surveys about the reputation of the mark in Austria and the UK; ev-

idence about advertising measures; mentions in trade journals . The

problem was that the golden bunny had only been registered gen-

erally for “chocolate and chocolate products .” For this reason, the

Board of Appeal of the EUIPO determined that the chocolate mar-

ket is a very large market, which includes sweets and baked goods

and all kinds of chocolate . The sales and marketing part of the Lindt

Easter bunny was considered only slight in comparison with the

market for chocolate and chocolate products . For that reason, the

Board came to the conclusion that the evidence submitted related

only to a seasonal product, which, in connection with the broad

categories for which the application was submitted represents only

an insignificant part of the European market and was therefore not

sufficient to justify a reputation with regard to the broad umbrella

term in question, namely “chocolate products and chocolate .” (c)

Finally, the Board of Appeal of the EUIPO determined that trade-

mark protection could not be considered for the golden bunny in

any case because the golden bunny consists only of a shape that

gives the shape a substantial value . Lindt itself allegedly submitted

that the shape of a golden bunny represents a decisive purchase

criterion . Shapes of this kind, however, cannot be monopolized by

a single company .32

Conclusion

If you want to prove distinctive character, the recommendation is to

choose a narrow list of goods, limited to concrete goods .

32 EUIPO Board of Appeal, Decision dated 07/07/2017, R 2450/2011-G – Goldhase (EU 009887811) .

What you see affects what you buy . It is

not just the content that makes a con-

sumer decide on a product, but also the

packaging . The mark applied for with re-

gard to a flavoring is a container in the

shape of an amphora, which deviates

from a normal amphora shape because

of the bulge, which is more defined than

usual .30 This deviation, however, was

stated to be for technical and functional

reasons because it serves the purpose of

positioning the container in a holder . The public addressed would

therefore not see this deviation as a feature identifying the origin of

the product . The entry of the shape as a 3D mark was therefore

unsuccessful .

In 2004, Lindt already attempted to protect the gold bunny with the

band and bell as a 3D mark for the EU . At that time, it was deter-

mined that the mark was not distinctive because it was a typical

Easter chocolate bunny . The application based on public reputation

was also rejected because the evidence related only to Germany .31

Lindt made another application to the EUIPO for the same mark in

2011 . This was again unsuccessful, with the EUIPO giving the fol-

lowing reasons: (a) the mark is still not of an original decisive nature .

Lindt allegedly also did not make any submission on why the situa-

tion should have changed in comparison with when it made its ap-

plication in 2004 .

30 EUIPO Board of Appeal, Decision dated 02/15/2017, R 1526/2016-1 – Shape of a bottle (3D) .

31 EuGH, Urteil v . 24 .05 .2012 – C 98/11 P – Goldhase (EU 003844446) .


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tection has changed as a result of the more recent case law of the

European Court of Justice . Now, an obstacle to protection is to be

affirmed if a trademark that exclusively consists of the shape of the

goods has one or more usage properties that are inherent in the

function(s) that are typical for this kind of product, which consumers

would also be looking for in competitor’s goods . The Federal Patent

Court stated as clarification that as a result such goods or packag-

ing shapes are excluded from registration if their appearance mainly

corresponds to the expectations of the consumer with regard to the

goods in question . This is exactly what the Federal Patent Court

saw as being fulfilled here, because Ritter Sport’s packaging is a

normal flow package . Consumers would also expect to see this in

competing products, not least because it is so practical . The other

details, such as fluting, knurling, indentations, were not considered

significant features of the packaging . In any case, these insignifi-

cant design elements were not sufficient as grounds for the design

to be registered as a trademark .

ZERTUS, Dextro Energy’s parent company, had two 3D marks reg-

istered for the form of its glucose tablets in 2003 . The appropriate

trademark protection was also granted on the basis of acquired

distinctive character . When a competitor filed for cancellation of the

trademarks, it was initially granted . The Federal Patent Court ruled

that the shape was necessary to achieve a technical effect, since

the shape offered the most space-saving option for storage, the

rounded corners facilitated consumption, and the centered recess

served as a predetermined breaking point to easily divide the tablet .

In October 2017, the Federal Court of Justice issued four land-

mark decisions on three-dimensional marks . The Federal Court of

Justice set aside Federal Patent Court decisions that had ordered

the cancellation of three-dimensional marks for Ritter Sport choco-

late packaging and Dextro Energy glucose .33

Background information

Ritter Sport had already obtained trademark protection on the

packaging, without print, of its square chocolate bars in 1995 and

1998 . At the time, the trademarks were registered due to acquired

distinctive character . Kraft Foods Schweiz Holding had initially suc-

cessfully contested the registrations . The Federal Patent Court held

that the challenged design solely consisted of a (packaging) form

that resulted from the nature of the goods itself .34 Such forms may

not be monopolized for a competitor .

Up to now, there has hardly been any legal precedent relating to

this obstacle to protection . This is because up to now the fact that

the shape consists exclusively of features that are necessary for

the type of goods involved to perform their purpose has been con-

sidered an obstacle to protection . This can only be assumed if the

features make up the basic form of the type of goods for which

protection is requested . The restrictive use of this obstacle to pro-

33 Federal Court of Justice, Decision dated 10/18/2017, I ZB 106/1 and I ZB 106/16 – Chocolate bar packaging Ritter Sport; I ZB 3/17 and I ZB 4/17 – Form Dextro .

34 BPatG, Beschl . v . 4 .11 .2016, 25 W (pat) 78/14 und 25 W (pat) 79/14 – Schokoladenverpackung Ritter Sport .


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2. Conflict between trademarks

Just because trademark applicants have overcome the hurdles to

registration does not mean that they are immune to conflicts with

other trademark owners . Can one gingerbread heart be mistaken

for another one or not? Likelihood of confusion exists if the con-

sumer could believe that the products in question originate from the

same company, or, if applicable from companies that are economi-

cally connected . In this case the understanding of an average, rea-

sonably well-informed and reasonably observant and circumspect

consumer is used as a basis .

2.1 Likelihood of confusion of word marks

Lindt successfully defended itself against the registration of

“Eddy’s Snackcompany” with regard to similar products .36 Lindt

based its objection on its “TEDDY” and “LINDT TEDDY” marks .

The Board of Appeal of the EUIPO stated that the primary charac-

teristic of the mark that had been applied for was the component

“Eddy” because the meaning of the term “Snackcompany” was

immediately apparent . As a result of the descriptive nature of the

term “Snackcompany” and the resulting weakness in identification,

“Eddy” was considered to be the dominant element in the mark

that was applied for . There is hardly any difference between the

sound and appearance of “Teddy” and “Eddy .” Although the word

“teddy” is used for soft toys, this does not create a contrast with

regard to the terms because soft toys, like pets, are often given

names by their owners, who are mainly children, and this could in-

clude, for example, “Eddy .” This is one of the few decisions in which

the Board of Appeal recognized the distinctive character of a mark .

The Federal Patent Court has always given greater weight to the

distinctive character of a mark . The mark PIRATENSPASS (“Pirate

Fun”) was attributed only a below-average level of distinctive char-

acter . Although the word “pirate” was not descriptive with regard

to the goods in question, but it has recently been used extensively

for promotional purposes since the very successful “Pirates of the

Caribbean” film series . For example, pirate themed children’s birth-

day parties are very popular . The public would therefore not see

anything that could be registered as trademark in the name “pirate,”

rather just a promotional presentation . There was therefore no like-

lihood of confusion with PIRATEN-MIX (“Pirate Mix”) because the

36 EUIPO Board of Appeal, Decision dated 07/11/2017, R 1999/2016-4 – Eddy’s Snackcompany .

Shapes of goods whose essential characteristic fulfils a technical

function are excluded from the eligibility of being registered as a

trademark .35

The most critical aspect of the decisions was that the grounds for

refusal accepted by the Federal Patent Court cannot be overcome

by proving acquired distinctive character .

Decisions by the Federal Court of Justice

Following the trademark owners’ appeals, the Federal Court of

Justice set aside the contested decisions and referred the cases

back to the Federal Patent Court .

With respect to Ritter Sport packaging, the Federal Court of Justice

holds that marks consisting exclusively of a shape that is deter-

mined by the type of product itself are not eligible for trademark

protection . This applies to a sign which consists exclusively of the

shape of a product with one or more essential characteristics which

are inherent to the generic function or functions of that product and

which consumers may be looking for in the products of compet-

itors . The Federal Court of Justice does not consider the square

shape of chocolate bars to be an essential characteristic of choc-

olate .

With regard to the shape of the Dextro product, the Federal Court

of Justice confirms that marks consisting exclusively of a shape that

is necessary to achieve a technical effect cannot claim trademark

protection . When the specially shaped corners and edges of the

glucose tablets make it more pleasant to consume them, this does

not have a technical function, but a sensory effect on consump-

tion . A three-dimensional mark is not eligible to be protected as a

trademark only where all its essential characteristics have technical

functions . This could not be determined for the design of the edges

of the tablets and the stacking of the individual tablets with these

edges, however, which is why the Federal Patent Court decisions

were set aside by the Federal Court of Justice .

The Federal Patent Court will now need to decide whether there

are other grounds that exclude trademark protection for the two

product shapes .

35 Federal Patent Court, Decision dated 12/27/2016, 25 W (pat) 59/14 and 25 W (pat) 60/14 – Form Dextro .


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There is likelihood of confusion between the registered word and

figurative marks “TENTAZIONE FREDDO FREDDO” and “freg-

go .”40 The ECJ based this decision on the understanding of Span-

ish and French consumers . For these consumers, the Italian term

“TENTAZIONE” would be understood as “temptation” and therefore

as a purely promotional statement . “Freddo Freddo” on the other

hand would be considered a purely made-up term . As a result of

the similarity in the sound of “Freddo” and “Freggo,” likelihood of

confusion was affirmed .

There is likelihood of confusion between

the figurative marks “Sun SNACK FEIN

GEBACKEN!” (in English: “Sun Snack,

finely baked”) and “Sunsnacks .”41 The

statement “finely baked” would be recog-

nized by most German consumers as a

reference to the method of production of

the “wafers, waffles, and edible paper .”

The dominant element is the “Sun

SNACK” component, which is not of a

descriptive nature with regard to the goods in question . There is a

high level of similarity between the appearance and sound of the

dominant element “Sun SNACK” and “Sunsnacks .”

40 ECJ, Judgment dated 07/18/2017, T-243/16 – Freggo .41 EUIPO Board of Appeal, Decision dated 07/21/2017, R 2353/2016-4 –

Sun SNACK FEIN GEBACKEN! .

marks differ from each other sufficiently as a result of the second

component “SPASS” or “MIX .”37

MIGNON and MIGNONETTE are similar enough to be mistaken

for each other .38 The French word “mignon” means “sweet” but not

every consumer in the Benelux countries, which were involved in

the case in addition to France, understands French . For this portion

of the consumers, it is a purely made-up term . As a result of the

similarity that exists, the public would think that products identified

by the marks MIGNON and MIGNONETTE originate from compa-

nies that have an economic connection with each other .

2.2 Likelihood of confusion of word and figurative marks

The General Court of the European Union

(GC) decided that there was likelihood of

confusion between ALPEN and Alpen-

schmaus .39 Weetabix is the owner of

the ALPEN trademark and filed an objec-

tion to the figurative mark “Alpen-

schmaus,” which was applied for by Aldi .

Even if consumers understand the word

“Alpen,” which is probably not the case in the UK, and recognize

this as a description of the geographic origin, the word “Alpen” is

not descriptive with regard to the product in question (cereal prod-

ucts) . The first associations that consumers would otherwise make

with the Alps, such as cows, milk, and products made from these,

are not transferable to cereal products . The word “Alpen” therefore

has normal level of distinctive character . The sounds of the words

were considered to have an above-average level of similarity . For

this reason, likelihood of confusion was affirmed .

37 Federal Patent Court, Decision dated 05/09/2017, 25 W (pat) 517/17 – PIRATEN-MIX .38 EUIPO Board of Appeal, Decision dated 04/24/2017, R 1859/2016-2 – MIGNON .39 GC, Judgment dated 09/14/2017, T-103/16 – ALPENSCHMAUS .


10




Intersnack proceeded successfully against the trademark applica-

tion for “Welly” based on its marks for “Kelly’s .”44 Not only the

similarity in the sounds of the two marks but also the overall layout

of the two marks was considered to result in likelihood of confusion .

Both marks have a square label and a dark background with a light

word printed on it .

Although the Board of Appeal of the EU Trademark Office only

granted a slight distinctive character to the “Náttúra” mark, it af-

firmed that there was likelihood of confusion with “Natura .”45 Visu-

ally, it was considered that there were only slight differences that

were noticeable . The additional “t” in “Náttúra” also makes no dif-

ference because “Náttúra” and “Natura” are pronounced in the

same way .

The figurative mark “Happy” was in-

tended to be registered for waffles and

wafer rolls . Fruit juice manufacturer

RAUCH objected successfully based on

its word mark “HAPPY DAYS .”46 The

older mark is protected in the Benelux countries and Italy . The con-

sumers there would confuse the brands, although the word

“Happy” had a certain weak distinctive character . This and the

graphic design of the more recent mark, however, were not suffi-

cient to rule out likelihood of confusion .

44 EUIPO Board of Appeal, Decision dated 07/12/2017, R 1525/2016-1 – welly (fig .) .45 EUIPO Board of Appeal, Decision dated 05/11/2017, R 1310/2016-4 – Natura

naturally healthy (fig .) .46 EUIPO Board of Appeal, Decision dated 05/02/2017, R 2121/2016-5 – Happy (fig .) .

McDonald’s successfully applied for the

removal of the “McSportnahrung.de”

(in English: McSportsFood .de) figurative

mark .42 The fast food giant owns many other marks starting with

“Mc” in addition to “McDonald’s,” e .g ., “McDrive,” “McBacon,”

“McCAFE .” The more recent mark was held to fit seamlessly into

this series of marks . The additional element “ .de” is hardly notice-

able here because it is at the end of the mark and the public would

only recognize this as the German website address identifier, with-

out any distinguishing nature . The relevant public will presume that

McDonald’s has extended its range to include products intended

particularly for nutrition during sporting activities . This is even more

evident because there has been a trend in the area of gastronomy

for years now toward healthy food, in particular food products that

are low in fat .

The disputed image “Meister Schokolade” (“Master Chocolate”)

and the older figurative mark “Lindt & Sprüngli MAÎTRE

CHOCOLATIER” (“Lindt & Sprüngli Master Chocolatier”) are not

considered similar .43 The word sequence “LINDT & SPRÜNGLI”

was considered to be in an important position, so that the overall

marks could not be considered similar . Although the word se-

quences “MAÎTRE CHOCOLATIER” and “MEISTER SCHOKO-

LADE” are conceptually similar, this does not result in likelihood of

confusion because the “MAÎTRE CHOCOLATIER” component of

the older mark does not have a distinctive role .

42 Federal Patent Court, Decision dated 05/31/2017, 28 W (pat) 508/15 – McSportnahrung .de .

43 Federal Patent Court, Decision dated 01/04/2017, 24 W (pat) 511/16 – MEISTER SCHOKOLADE .


11




Capri-Sun AG filed an opposition based on its EU mark for the

shape of the pouch for “Capri-Sun” to the registration of a 3D mark

for a pouch named “Sun Blast .”49 It was determined that the “SUN”

component has a low distinctive character . Just the correspon-

dence of the component “SUN” could therefore not lead to likeli-

hood of confusion . The other design elements, like the image of

fruit or the shape of the pouch, also have only a weak distinctive

character and therefore do not indicate likelihood of confusion .

The disputed three-dimensional mark

consists of product packaging with the

words “VIDAL,” “Dracula,” and “balls .”50

The company Mederer filed an opposi-

tion based on its word mark “Dracula .”

Likelihood of confusion was affirmed,

whereby the likelihood of confusion was

assessed in relation to a Spanish con-

sumer . This is because the word “Drac-

ula” was most prominent on the packag-

ing . In particular, the terms were

conceptual identical because both marks relate to the term vam-

pire . Contrary to Vidal’s submission, the Board of Appeal attributed

a normal level of distinctive character to the term “Dracula .”

49 EUIPO Board of Appeal, Decision dated 06/20/2017, R 1161/2016-4 – SUN BLAST / CAPRI-SONNE .

50 EUIPO Board of Appeal, Decision dated 05/26/2017, R 2005/2016-4 – VIDAL Dracula-balls (3D) .

There is no likelihood of confusion between “VIDAL Sweet Cakes”

and the Kaufland brand “Sweet .”47 Unlike the Opposition Division,

the Board of Appeal of the EUIPO determined that the word “sweet”

is generally understood by the average person in the EU . The op-

posing mark therefore has no distinctive character . Only the cor-

relation of the weak element “sweet” therefore did not result in like-

lihood of confusion between the marks .

2.3 Conflicts in product packaging or designs

Intersnack had an EU design registered for snacks in the shape of

a bell . The Spanish company LENG-D’OR objected to this . It is the

owner of an EU mark for a similar form (shown here in black and

white) . The Board of Appeals of the EUIPO found that the two

forms give the same overall impression . The Intersnack design

therefore lacked individuality and was therefore deleted .48

47 EUIPO Board of Appeal, Decision dated 03/29/2017, R 1511/2016-4 – VIDAL SWEET CAKES (fig .) .

48 EUIPO Board of Appeal, Decision dated 06/20/2017, R 45/2016-3 – Glockenform (Design) .


12




The GC confirmed this decision, overall, the rounded edges and

the different label with “MIK MAKI” on it were not considered a dis-

tinctive feature .52

52 GC Judgment dated 10/03/2017, T-695/15 – MIK MAKI packaging design .

The typical “Tic Tac” box was registered as a three-dimensional

mark for the little “Tic Tac” candies by Ferrero back in 1975 . The

GC most recently decided on whether there is likelihood of confu-

sion between the registered EU design for a container for similar

candy of the Polish confectionery manufacturer BMB and the Tic

Tac box . The Board of Appeal of the EUIPO affirmed likelihood of

confusion .51

51 EUIPO Board of Appeal, Decision dated 09/08/2015, R 1150/2012-3; see also discussion in SKW Confectionery Industry Special / Annual Review 2015 .

Margret Knitter, LL.M.

m .knitter@skwschwarz .de

13





Use in Deviating Forms

If registered trademarks – for example within a new marketing

strategy – from time to time are updated, stylistically adjusted, or

developed further for operational reasons, this might therefore in-

volve legal risks . To protect its economic interests, the trademark

owner on the one hand is entitled to make slight adjustments and

perform modernization of the trademark, which may be considered

necessary to promote sales of goods or services that are marked

accordingly .3 On the other hand, trademark protection may be at

risk if the public no longer considers the registered form and the

form used as one and the same trademark .4

Change in the Significant Character of Trademarks

Whether consumers who are aware of the registered form of trade-

mark still recognize its overall impression despite the differences in

details and taking into account its use customary in trade depends

very much on the individual case .5 Significance and distinctiveness

of the trademark are of considerable importance .6 The benchmark

is the averagely informed, appropriately attentive, and reasonable

consumer .7 The latter is aware that trademarks are actually market-

ing tools and therefore “move with the times .” With regard to the

assumption of the same overall impression, it is thus not necessary

for the registered form to be identical to the form that is in use .8

3 ECJ 07/18/2013, C-252/12, paras . 28 et seq . – Specsavers; ECJ 10/25/2012, C553/11, para . 30 – Rintisch (PROTI); CFI 09/15/2015, T483/12 – Nestlé/HABM – LOTTE, para . 74

4 BPatG GRUR 1979, 712 (713) – BioMix5 BGH GRUR 2013, 840 para . 20 – PROTI II; BGH GRUR 2014, 662 para . 17 (18) –

Probiotik6 BPatG GRUR 1995, 588, (589) – Jeannette/Annete; Hildebrandt, trademarks and

other identifications, 4th edition, Section 8 paras . 37 et seqq . with additional citations7 Cf . BGH GRUR 2013, 725 margin note 31 – Duff Beer; BGH GRUR 2015, 587

para . 21 – PINAR8 Ingerl/Rohnke, MarkenG, Section 26, para . 138; BGH GRUR 2010, 270 para . 18 –

ATOZ III

Georg Delhaes

Use of Confectionery Trademarks in a way as to preserve Trade-mark Right – Limits for Use in a Modified Form

The protection of registered trademarks exists in principle only if

they are actually used . The usage obligation serves economic pur-

poses: if the owner does not use its trademark right for registered

goods and services, after the end of an initial grace period, the

trademark should be freely available to other market participants

and interested parties . According to the law, injunctive relief, claims

to compensation, and other claims can only be asserted and third-

party applications can only be contradicted if the trademark has

been used seriously within the last five years before the asserting

of the claim .1

Use in the Registered Form

In order to maintain the trademark, it is sufficient and even neces-

sary for it to be used in the form that it was recorded in the register .

Modifications that change its significant character or its distinctive-

ness can result in trademark protection being lost . If the trademark

is not used in a way that preserves protective rights, it can also be

deleted from the trademark register irretrievably at the request of a

third party .2

1 Sections 25, 26, 43 Trademark Act; Art . 47(2) CTR; Art . 5 C Paris Convention2 Section 49(1) Trademark Act; Art . 18(1)(2)(a); 58(1)(a) CTR; cf . ECJ C-259/02,

01/27/2004, paras . 28 et seqq . – La Mer/Laboratoires Goemar


14




– Addition of descriptive terms, or other terms that clearly do not

refer to the origin of the product (e .g ., “power” or “plus”) that do

not merge with the word mark to create a unified mark .14

“PROTI” =

“PROTI” =

– Language modernizations, such as a change in the German

spelling of tea from “Thee” to “Tee”, provided the motif of a fig-

urative mark is retained or graphic design elements are the fo-

cus .15

– Change in the spelling or concept of a word mark, or the ad-

dress of the trademark holder included in it .16

“IDRIVE” = “iDrive”

– This does not apply, however, if the significant character of a

mark that in itself is not capable of being protected relates pre-

cisely to a special spelling:17

“bonyour” ./ . “bonjour”

– Reference (e .g ., in the invoice or on packaging) to the mark by

means of an acronym, formed from the initial letters of several

words of the registered trademark, as long as the meaning of

the abbreviation cannot be misunderstood and there is no doubt

about its meaning in the context of its use .18

= “CC”

14 BGH GRUR 2013, 840 para 25 (31 et seqq .) – PROTI II15 BGH GRUR 1989, 510 (512) – Teekanne II16 CFI MarkenR 2016, 179 paras . 53 et seqq . – IDRIVE/iDrive17 BPatG GRUR 1998, 64 (65)18 ECJ T687/15, 02/02/2017, paras . 30, 43 et seqq . – Marcas Costa Brava/EUIPO /

Excellent Brands, JMI; cf . also CFI T29/04 12/08/2005, paras . 30 et seqq . – CRISTAL/CRISTAL / CASTELLBLANCH

a) According to the case law, the significant character

of the registered mark is regularly maintained in the

following cases:

– Deviations in upper/lower case lettering:9

“Goldquell” = “GoldQuell”

– Use of words registered in the plural in the singular:10

“Goldbär” = “GOLDBÄREN” (“Gold bear” = “GOLD BEARS”)

– Splitting of one word into two words:11

“Kornkammer” =

– Change in font and graphic emphasizing of the initials:12

=

– Removal or addition of an individual letter, that is not associated

with any change in the phonetics or meaning of the trademark:13

“Jeanette” = “Jeannette”

“Thermorol” = “Thermoroll”

“Lisat” = “Ysat”

9 BPatG, GRUR 2008, 77 (78)10 Cologne Higher Regional Court 04/11/2014, Case 6 U 230/12, para . 87 – Goldbär11 BGH GRUR 2000, 1038 (1039) – Kornkammer12 BGH GRUR 1999, 164, 165 – JOHN LOBB13 BPatG GRUR 1995, 588; BGH GRUR 2009, 888 para . 16; BPatG GRUR 2005,

592 (593)


15




– In case of figurative and word/figurative marks, the addition or

removal of graphic elements that are purely decorative and that

are perceived as independent elements to which the public at-

tributes no significance with regard to identification .22 23 24

=

=

=

– Addition of figurative elements with a low level of distinctiveness,

such as the addition of a round border .25

– Removal or addition of word or figurative elements that are not

of significance with regard to distinctiveness, such as a legally

required information about the manufacturer on the edge of a

bottle label:26

=

22 BGH GRUR 2013, 725 para . 19 – Duff Beer23 CFI T-381/12 dated 03/12/2014 paras . 37 et seqq . – PALMA MULATA24 CFI T-543/12 dated 10/24/2014 paras . 81 et seqq . – Grau Ferrer25 CFI T-146/15 dated 09/13/2016 paras . 42 et seqq . – hyphen; ECJ C-587/16 P

02/28/2017 para . 4 – Skylotec26 BPatG GRUR 2003, 530 (532) – Waldschlösschen

– Removal of an accent:19

“Castello” = “Castelló”

– Removal of a hyphen in a case where the two word components

are arranged at the same time above instead of next to each

other:20

“Power-Horse” =

“‘Karolus-Magnus’

der rheinische Riesling-Sekt” =

– Addition or removal of a word component, e .g ., a plural or geni-

tive “s” in German, which does not have any identifying function .

The German Federal Court of Justice, however, ruled that use

of the name “Kelly” for the sale of popcorn does not preserve

trademark rights in the registered mark “Kelly’s .”21

19 CFI T-549/14 dated 10/04/2016 paras . 49 et seq . – Castello20 BGH BeckRS 2015, 08906, paras . 12 et seqq . – Power-Horse; BGH GRUR 1999,

167 (168) – Karolus-Magnus21 BGH GRUR 2003, 1047 (1048) – Kellogg’s/Kelly’s; str . cf . Ingerl/Rohnke MarkenG

Section 26 para . 151


16




– In case of a change in form, i .e . the use of three-dimensional

trade mark in two-dimensional form .34 However, the use of a

two-dimensional figurative mark for a three-dimensional design

may preserve the same right if the change in dimension does not

alter the overall impression of the mark .35

In case of three-dimensional marks, the public perceives the

pure form generally only as a reference to origin it has already

been made very distinct from the usual designs in the sector or

if intensive use can be proven . If this is not the case, even the

removal or addition of text to or from a 3D mark can alter its

significant character .36

. /.

– In case of position marks, the exact positioning is a significant

component of the mark . If the location of the mark on the prod-

uct changes, this can have a negative effect on the identifying

character of the mark .36

c) From the point of view of protection of confidence,

so-called “old marks” that were registered a long time be-

fore the introduction of mandatory use (in 1967) and used

in an altered form only at a later time, are judged in a more

lenient manner. Failure to recognize their use in a manner

as to preserve trademark rights would have caused irrepa-

rable damages to the owner.37

34 Cf . Ingerl/Rohnke, MarkenG, Section 26 Margin note 191; differentiated Ströbele/Hacker/Ströbele margin note 126

35 BGH GRUR 1998, 934 (936) – Wunderbaum36 Cf . Ingerl/Rohnke, MarkenG, Section 26 margin note 19237 BPatGE 25, 45, 47 – Rocky; BGH GRUR 1975, 135, 137 – KIM-Mohr

– Change in or addition of a quality reference or quality seal that

is included in the mark (e .g ., “DLG-PRÄMIERT” – “DLG Award-

ed”) .27

– Use in connection with a company name, as long as the pub-

lic sees the second mark as identification of the company only .

The trademark “Rice Krispies” was viewed as retaining its rights

when used in connection with the company name “Kellogg’s .”28

– Union marks that include the name and address of their owners

can be changed upon application in the register if this does not

result in a significant negative effect on the originally registered

mark .29

– Changes to the owner stated in the mark, however, are damag-

ing if the name itself has an identifying function .30

b) Care should be exercised if the overall impression of

the mark changes or if a graphic design is chosen that

allows a new, independent image to be created.

This is the case, for example:

– In case of a reversal in the size, which moves the focus from the

visually dominant image element to the word element .31

. /.

– In case of a change in the colors of a mark registered in black

and white or greyscale if the color contrast and therefore the

characteristics of the mark are changed .32

– In case of abstract color marks, even slight deviations in the

color tone may alter the overall impression . In case of multicol-

ored marks, in addition the relationship between individual col-

ors must remain unchanged .33

27 BPatG GRUR 1997, 836 (837) – Apfelbauer28 BPatG Mitt 1988, page 78 – Rice Krispies29 Art . 54(2) EU Trademark Directive30 OLG Munich, judgment dated 11/19/2002, file ref . no 29 U 2590/02 –

Christkindl-Glühwein31 BGH BeckRS 2006, 00423 paras . 14, 16 – Mars32 Cf . BGH GRUR 2006, 859 (863) margin note 34 – Malteserkreuz; BGH GRUR

1963, 423 (425) – coffeinfrei33 Cf . ECJ GRUR 2004, 858 margin note 33f . (42) – Heidelberger Bauchemie


17




As a result of the fact that the assessment of whether in the view

of the public, the trademark is “the same trademark” is always

dependent on the individual case, caution is recommended when

changes are being made to a registered trademark and it must be

checked whether the new form retains the “essence” of the existing

mark .

d) With regard to questions of use preserving trademark

rights, it is irrelevant in the end whether the modernized

form of the original mark is registered as well.38 The holder

of the trademark can also refer to the use of the registered

mark if he has arranged for independent protection of the

updated trademark design by filing application for a new

trademark.39

Result

Changes in a mark must not be detrimental to the valuable old

rights to the registered mark . If its significant character is preserved,

the registered mark may also be used in an altered form . This is still

the case if the mark used more recently is likewise registered as a

trademark .

38 Section 26 Para . 3 (2) MarkenG39 BGH GRUR 2013, 840 margin note 25 – PROTI II; ECJ, GRUR 2012, 1257 margin

note 18 (30) – Rintisch/Eder; ECJ judgment dated 07/18/2013, C-252/12, note 28f . – Specsavers

Georg Delhaes

g .delhaes@skwschwarz .de

18





The use of the trademark in an advertising slogan therefore does

not just serve the purpose of indication of origin . However, for

the purposes of distinctiveness, it is sufficient for the sign to be

used as an indication of origin and as a slogan for the goods or

services claimed, in addition to its function as an indication of

origin .3

How to formulate an advertising slogan that conveys a message

and at the same time is suitable to fulfill the purpose of an indi-

cation of origin? In some cases, even a simple statement may

be suitable to be a trademark . A slogan does not need to be

particularly imaginative, either, such as “Bild Dir Deine Meinung”

(“Form your own opinion” for the “Bild” newspaper) . An advertis-

ing slogan must not be exclusively descriptive of the product, but

must also be understood as an indication of origin .4 “Delicious

chocolate” would be purely descriptive for chocolate . Not nec-

essary, but useful for trademark protection is a sign with several

meanings, a play of words or a sign that is perceived as imagi-

native, surprising and unexpected and thus memorable .5 In ad-

dition, a famous slogan can be registrable if it has been used for

many years and the relevant public has therefore become used

to connecting the slogan with a product from a certain company .6

And why was “SPÜRBAR ANDERS” not considered registrable?

The application was made by Cologne-based soccer team 1 .

FC Köln which was denied registration of this slogan for mer-

chandising items before the European Court of First Instance .7

In the Court’s view, it is sufficient for a lack of registrability that a

possible meaning designates a characteristic of the goods and

services in question . In this case, the message in relation to the

goods and services in question is sufficiently clear for the rele-

vant public . However, one can take a different view in that case .

Therefore, the approach of the courts is not quite clear with re-

gard to slogans .

3 ECJ, Judgment dated 01/21/2010 – C-398/08 – Vorsprung durch Technik (The Technical Edge) para . 45; Federal Court of Justice, Decision dated 07/15/1999, I ZB 16/97 – YES .

4 Federal Court of Justice, Decision dated 07/15/1999, I ZB 16/97 – YES; Federal Court of Justice, Decision dated 12/08/ 1999 – I ZB 2/97 – Radio von hier (Radio from here) .

5 ECJ C-398/08P dated 01/21/2010 Vorsprung durch Technik para . 47 .6 ECJ C-398/08P dated 01/21/2010 Vorsprung durch Technik para . 59 .7 GC, Judgment dated 10/04/2017 – T-126/16 .

Christina Bauer, LL .M .

Registrability of Slogans

“Da werden Sie geholfen” (“You will get help here”) makes people

laugh, “Supergeil” (“super cool”) is celebrated, and “Es geht auch

krüger!” (“Make it Krüger”) has almost been forgotten .1 Advertising

slogans usually have a priceless media effect and are almost as

significant economically as a strong brand . The word sequences

“Ich freu mich drauf” (“I’m looking forward to it”) and “Come in and

find out” have two things in common: they evoke associations and

are each registered as a trademark . But how are these advertis-

ing slogans different from “SPÜRBAR ANDERS.” (“NOTICEABLY

DIFFERENT .”), which was denied registration as a trademark?2

When can a slogan be registered as a trademark?

A sign may be protected as a trademark if it designates a specific

product . In order to obtain this trademark protection, the sign

must be distinctive, which means eligible to differentiate products

of one company from the products of other companies . For ex-

ample, the sign “chocolate” is not eligible to distinguish the choc-

olate produced by one company from that produced by another .

The relevant public must be able to allocate the trademark to a

particular undertaking . With regards to chocolate, for example,

by using the sign “Milka .” An advertising slogan, however, should

not (only) name a product, but primarily convey a message, such

as the quality of the advertised product . This is apparent in case

of “Melitta macht Kaffee zum Genuss” (“Melitta makes coffee a

pleasure”) or “EDEKA – Wir lieben Lebensmittel” (“EDEKA – we

love groceries”), where the product is even mentioned literally in

the slogan . Solely the use of the brand in the slogan led to regis-

tration in each case .

1 All registered as a trademark in the register of the German Patent and Trade Mark Office .

2 GC, Judgment dated 10/04/2017 – T 126/16 .


19




Precisely because protectability is often unclear, companies

should also register the slogans they use as a trademark . Other-

wise third parties could apply for trademark protection and then

attack the user of the slogan . If the Office registers the slogan for

the user, that is good . If the Office does not register the slogan

– which should preferably be confirmed by a higher court – this

decision can in any case be held against third parties who have

been more fortunate with the same slogan .Christina Bauer, LL.M.

c .bauer@skwschwarz .de

20





2. The view of the Federal Court of Justice

In the aforementioned decisions, the Federal Court of Justice has

recently repeatedly used the option of providing practitioners with

its understanding of “active inaction,” thereby making the injunctive

relief claim without fault en passant to an even sharper sword than

it was in the past . In the words of the Federal Court of Justice:2

“A debtor who has been prevented by court order to market a

product with a particular presentation or to advertise a product

with specific information must, as a matter of principle, ensure by

means of a product recall that products already on the market will

no longer be sold by its customers.”

In the decisions, the Federal Court of Justice recognizes that there

is usually no basis for requesting the return of goods in supply re-

lationships due to a lack of contractual recall options for the party

liable for injunctive relief, since, according to the Federal Court of

Justice, the party liable for injunctive relief is “merely held to exert

influence on third parties whose actions benefit him financially if he

has to expect a serious breach of the law and also has legal and

actual means of influencing the behavior of third parties.” With this

jurisdiction, the Federal Court of Justice demands that the party

liable for injunctive relief should “take all possible and reasonable

measures to prevent the continued resale of the products [...] by its

customers.” In the future, according to the Federal Court of Justice,

it will also be required to ask the contracting parties “to return the

remaining products.”

2 Federal Court of Justice GRUR 2017, 208, 211 para . 30 – Rescue Tropfen

Dr . Sascha Pres

Out of sight out of mind?

An obligation to recall products may also exist in the case of injunctive relief claims

It is no secret that the Federal Court of Justice intends to provide

the direction for companies and individuals under cease and desist

obligations, as demonstrated in the recent decisions on “Hot Sox”,

“Rescue Tropfen” (“Rescue drops”), and “Luftentfeuchter” (“air de-

humidifiers”) . Even if legal dogmatism is complaining1, debtors of

injunctive relief claims will have to get used to recalling products if

they have undertaken to cease and desist from acting in a certain

way or if they have been legally obligated to do so .

1. Starting position

The legal requirements on the sale and advertising of foodstuffs

are highly complex, and there are numerous pitfalls for potential

violations of the law . In addition to the infringement of third-party

(IP) rights (e .g ., trademarks, designs), the protection against coun-

terfeiting under Section 4(3) Act Against Unfair Competition is to be

considered, in particular also Section 3a Act Against Unfair Compe-

tition, which is used to sanction market conduct rules under unfair

competition law and which may trigger (cease and desist) claims

by competitors and – even worse – by consumer associations . In

this context, the legal infringements are typically directly linked to

product features (e .g ., infringements of third-party IP rights, label-

ing violations, infringements of the Health Claims Regulation) or the

product itself contains unauthorized additives . If third parties re-

quired companies to cease certain behavior, the question arises as

to what “cease and desist” actually means .

1 As an example for many, Hermanns, GRUR 2017, 977


21




cease and desist order should not have been issued, Section 945

Code of Civil Procedure provides the relevant debtors with a claim

for damages against the creditors . Damage caused by the recall,

which was not actually necessary, would then have to be compen-

sated by the creditors and, in contrast to the image damage which

is difficult to measure, could easily be quantified .

3. Practical tip

If there is some silver lining from these decisions, it is surely the legal

certainty that the Federal Court of Justice is creating and the en-

forcement of rights that it wanted to strengthen . For creditors, this

continued legal view, despite the upcoming change in the chair-

manship of Division I of the Federal Court of Justice, has doubt-

lessly sharpened the legal weapons . Debtors, on the other hand, if

they are serious about fulfilling the injunction claim, may from now

on practice being humble and contact their customers for any vio-

lation exceeding the trivial limit .

There is also a clear downside of these decisions for creditors, how-

ever . It is well known that disputes under IP law and unfair compe-

tition law are frequently held in preliminary injunction proceedings,

in which courts review creditors’ claims in summary form and order

the cease and desist behavior – i .e ., implicitly the recall – without

hearing debtors in advance . If it subsequently turns out that the

Dr. Sascha Pres

s .pres@skwschwarz .de

22





In accordance with Article 7(3) Food Information Regulation, food

information may not attribute to a food the property of preventing,

treating or curing a human disease . Section 12 Food and Feed

Code was repealed effective December 13, 2014 .

Under Article 26(2)(a) Food Information Regulation, it is also anti-

competitive to use inaccurate indications of the country of origin

or place of provenance of the food, which may also arise simply

from labeling (e .g ., product labeling in a foreign language) . In these

cases, misleading information with regard to the place origin may

be excluded by a clear delocalizing indication such as “made in

Germany .”

It is important to note that not only manufacturers or importers are

responsible “food business operators” as defined by the Regula-

tion, but also operators who, on the basis of the information in their

possession as professionals, “know or presume to be” non-com-

pliant with the applicable food information law and requirements

of relevant national provisions . In case of doubt, it is therefore suf-

ficient for operators to be negligent in order for claims to be made

against them as well .

The following section describes relevant judgments on the topic of

misleading information, including those falling within the scope of

application of the Food Information Regulation .

II. Overview of Case Law

At the end of 2015, the Federal Court of Justice decided in a guide-

line judgment and after submission to the CJEU on product labeling

of a fruit tea by producer Teekanne .1 The dominant element of the

packaging of the product “Felix – Himbeer-Vanille-Abenteuer”

(“raspberry vanilla adventure”) showed raspberries, as well as va-

nilla beans . In addition, the package included the additional indica-

tion of “only natural ingredients,” emphasized in a circle to make it

1 Federal Court of Justice, Judgment dated 12/02/2015 – I ZR 45/13 .

Dr . Dorothee Altenburg

Pitfalls in food labeling

I. Introduction

Since December 13, 2014, the provisions of EU Regulation

1169/2011 on the provision of food information to consumers

(Food Information Regulation) have had to be complied with in the

European Union .

The Regulation ensures that manufacturers across Europe have

standardized and clear rules for food labeling and that consumers

receive comprehensive information when purchasing food . It re-

places the previous European Labeling Directive, the German food

labeling regulation, as well as the European Nutritional Labeling

Regulation and the German Nutritional Labeling Ordinance .

The Food Information Regulation provides rules for improved leg-

ibility (including a minimum font size), clear identification of food

imitations, better identification of allergens in prepackaged food,

and obligatory information on allergens in loose goods . Since De-

cember 13, 2016, it has also been mandatory to include nutritional

information on prepackaged food .

As part of the transposition, the provisions on deception under

Sections 11, 12 German Food and Feed Code were partially re-

pealed and partially supplemented by references to Article 7 Food

Information Regulation, which now governs misleading information

with regard to food . There are a few changes in content compared

to the previous provision under Section 11(1)(1)-(3) Food and Feed

Code (misleading information with regard to characteristics, adver-

tising with statements on effects, advertising with self-evident facts) .

Food information must be accurate, clear, and easy to understand .

Food may not, for example, be attributed effects that have not been

demonstrated by generally accepted scientific evidence .

Article 7(1)(d) Food Information Regulation is new . It includes the

case group of “substitutions,” such as cheese analogues, which is

why the labeling must bear a clear indication of the component or

the ingredient that was used for the partial or whole substitution .


23




apple juice concentrate, fructose syrup, 1 .3% elderberry juice from

elderberry juice concentrate, and only 0 .1% raspberry juice from

raspberry juice concentrate, and 0 .1% rhubarb juice from rhubarb

juice concentrate . Amberg Regional Court held this to be mislead-

ing since because of the name “raspberry rhubarb,” the average

consumer would be led to expect a considerable content of rasp-

berry and rhubarb juice, and this expectation would be further re-

inforced by the focus on “raspberry rhubarb” from a printing point

of view . The simple taste of raspberry and rhubarb, as well as the

listing of the actual ingredients in the ingredient list are not sufficient

to avoid the possibility of consumers being misled .3

The “pura Erdbeere” (strawberries) fruit spread sold by Schwartau

had a label on the front indicating “pura 100%* fruit – strawberries .”

In addition, there was a picture of a large strawberry on a strawberry

plant with leaves and blossoms in the center of the label, which

continued on the back of the jar . The list of ingredients showed that

the “strawberry fruit spread” consisted of strawberries (52g/100g),

fruit sweetener from apple juice (44g/100g), fruit sweetener from

grape juice (15g/100g), aronia juice concentrate, thickening agent

pectin (from apples), and lemon juice concentrate . Lübeck Regional

Court did not consider a strawberry content of 52% to be sufficient

affirm that strawberries were the main component and therefore

the name “pura 100%* fruit” was misleading for the average con-

sumer . While consumers are aware that jams and fruit spreads do

not consist exclusively of puréed fruit, but also contain preserving

sugar or household sugar, the word element “pura,” referring to

“pure,” “mere,” and “natural” gave the misleading impression that

the product consisted of 100% fruit . The addition of the asterisk

3 Amberg Regional Court, Judgment dated 07/29/2016 – 41 HKO 497/16 .

look like a seal of quality . In fact, this tea did not contain any com-

ponents or flavors of vanilla or raspberry, but only their taste, as in-

dicated correctly in the list of ingredients . After submission to the

CJEU, the court decided, in a deviation from its previous practice,

that it is misleading to the appropriately well informed, attentive,

and critical average consumer if the labeling, in addition to the na-

ture of the design of a food product overall, gives the impression

that this food contains an ingredient that is actually not present .2

The Food Information Regulation expressly provides that informa-

tion about food products is considered misleading if by means of

the appearance, the description or pictorial representations, the

presence of a particular food or an ingredient is suggested, while in

reality a component naturally present or an ingredient normally

used in that food has been substituted with a different component

or a different ingredient . According to the CJEU, this relates in par-

ticular to the terms and illustrations used, as well as the placement,

size, color, font, language, syntax, and punctuation of the various

elements on the packaging of the product . The eye-catching pre-

sentation of the “Himbeer-Vanille-Abenteuer” fruit tea was there-

fore, despite the correct list of ingredients, misleading product la-

beling .

Similarly, a beverage producer may not use the words “raspberry

rhubarb” on the label if the content of raspberry and rhubarb is just

0 .1% . Netto Market-Discount sold the multi-fruit rhubarb drink “Ac-

tive Fruits,” whose label included the text “30% fruit content from

fruit and vegetable juice concentrates .” Rhubarb stalks, raspber-

ries, and an apple were also shown on the packaging . The ingre-

dient list showed that the drink contained mainly apple juice from

2 CJEU, Judgment dated 06/04/2015 (ECLI:EU:C:2015:361 – Verbraucherverband Bundesverband/Teekanne) .


24




According to Celle Higher Regional

Court, the name “Heidekrone” (heather

crown) for honey, which was produced

from the nectar of heather flowers, is not

a violation of the Food Information Regu-

lation if the label on the front states that

the producer is residing at the edge of

Lüneburg Heath, although the honey

comes from a mixture of honeys from

various EU Member States . The name “Heidekrone” rather rep-

resents a reference to the botanical and not geographical origin of

the honey . “Heidehonig” is a synonym for “heather blossom honey .”

This abbreviation is also familiar to the average consumer . As a re-

sult, consumers would not presume that the nectar for the heather

honey originates from heather honey from the geographical region

of Lüneburg Heath . There is no misleading information given .7

The slogan “So wichtig wie das tägliche

Glas Milch” (“As important as a daily

glass of milk”) was used by the producer

of the “Monster Backe” cream cheese

fruit dip . The Center for Protection

against Unfair Competition considered this misleading because it

contained the statement that this product was as important for chil-

dren as milk since the cream cheese fruit dip contained as much

calcium as milk as a health-promoting component . A cup of the

cream cheese fruit dip could, however, not contain the same pro-

portion of calcium as 0 .2 l of milk, since four cups of the cream

cheese fruit dip would be needed to provide this amount of cal-

cium . The cream cheese fruit dip packaging did not include an

appropriate indication of this fact . The Federal Court of Justice de-

cided that a slogan of this kind is not a statement referring to the

nutritional value as defined in the Food Information Regulation .

While the slogan “As important as a daily glass of milk” does con-

tain a health-related statement, it is not misleading . Consumers

would be able to determine that the composition of milk and cream

cheese fruit dip were different, so that the slogan would not refer to

all ingredients and in particular not to the percentage of sugar . Both

7 Celle Higher Regional Court, Judgment dated 11/24/2016 – 13 U 130/16 .

“100%*” was not sufficient clarification to remove the risk of con-

sumers being misled .4

On the other hand, the product name “Holunderblüte” (elderflower)

as well as the image of elderflowers on a bottle of syrup does not

create a misconception, although the syrup contained a significant

proportion of pear and apple juice concentrate . It is initially sug-

gested to the relevant public from the product presentation that the

syrup consists of ingredients that were obtained from natural elder-

flowers . This was actually the case here . As long as the juice con-

centrates do not overpower the taste of elderflower, consumers’

expectations are not disappointed, according to Frankfurt Higher

Regional Court .5

The designation of a whole milk product as “Weide-Milch” (“pas-

ture-grazed milk”) is not misleading if the front side shows grazing

cows and the rear side includes the following accurate passage

of text: “This product is 100% pasture-grazed milk. Our pas-

ture-grazed milk comes from cows that roam freely on pastures

for at least 6 hours a day, 120 days per year.” A competition as-

sociation filed a complaint for misleading information because the

milk originates from cows that spend only 6 hours a day, 120 days

per year on pastures and the rest of the time in the barn . In the

case of seasonal products, which are offered all year round, con-

sumers would expect cows to have grazed extensively on pastures

prior to milking . Nuremberg Higher Regional Court did not follow

that view . There are no legal requirements about when milk may

be called “pasture-grazed milk .” In general, milk is referred to as

“pasture-grazed milk” if the milk comes from cows that are on pas-

tures daily during the pasture season and are grazing there . Con-

sumers are also aware that cows do not graze on pastures all year

long . Any misconception would at least be rectified by means of the

clarification on the reverse side . There was therefore no misleading

information .6

4 Lübeck Regional Court, Judgment dated 06/06/2017 – 11 HKO 47/16 .5 Frankfurt a . M . Higher Regional Court, Decision dated 09/11/2017 – 6 U 109/17 .6 Nuremberg Higher Regional Court, Judgment dated 02/07/2017 – 3 U 1537/16 .


25




of the product was intended to improve physical performance in

sports and therefore would not lead to an unwanted increase in

sugar consumption . This argument was not upheld by the ECJ .

With regard to the high level of protection of consumers, health

claims should not be used for advertising purposes if they are in-

consistent with generally accepted nutrition and health principles .

With regard to Dextro Energy, this means that health claims about

glucose may not be used on its product packaging .

III. Conclusion

Potential deception remains a dominant topic in the interplay be-

tween product designs that are intended to attract attention and

encourage consumers to buy by providing information on natural,

regional, or (supposedly) healthy ingredients on the one side and

the actual content of the products and consumer expectations on

the other side . A certain degree of maturity is definitely attributed

to consumers in jurisdiction, particularly when it comes to images

of individual ingredients . Caution is still advised, however, when the

false impression of dominating ingredients in a product is created,

which can usually no longer be remedied with an informative list of

ingredients .

products do contain calcium, which contains minerals that promote

bone growth . The Federal Court of Justice therefore did not con-

sider this to be misleading information .8

Dextro Energy GmbH & Co . KG wanted

to advertise its glucose tablets with

health-related statements such as “glu-

cose supports physical activity,” and

“glucose contributes to normal muscle

function during physical activity,” which was rejected by the CJEU,

however .9 This product advertising requires an approval by the Eu-

ropean Food Safety Authority (EFSA) . Although the evaluation of

the health-related statements by the EFSA was positive, the Euro-

pean Commission applied for the rejection of the statements in

question . The reason for this was the issuing of Commission Regu-

lation (EU) 2015/8 refusing to authorise certain health claims made

on foods, other than those referring to the reduction of disease risk

and to children’s development and health . Accordingly, health

claims are prohibited if they are inconsistent with generally ac-

cepted nutrition and health principles . The allegation made to Dex-

tro Energy was that the health claims were sending a contradictory

and confusing signal to consumers because they called for the

consumption of sugar . In the complaint before the General Court

(Court of First Instance), Dextro Energy defended itself against the

non-approval and asserted a breach of the Health Claims Regula-

tion (EC) No 1924/2006 . The complaint was, however, rejected in

March 2016 on the grounds that the Commission would have to

take into consideration in its decision all applicable provisions of

Union law and other legitimate factors .

If national and international authorities recommended a reduction in

sugar consumption, a call to consume sugar would send a contra-

dictory and confusing signal .10 Dextro argued that the glucose con-

tained served exclusively nutritional purposes, which was desired

by a targeted consumer group and, in addition, the consumption

8 Federal Court of Justice, Judgment dated 02/12/2015 – I ZR 36/11 .9 CJEU, Judgment dated 06/08/2017, C-296/16 P .10 CFI, judgment dated 03/16/2016, Case T-100/15 .

Dr. Dorothee Altenburg

d .altenburg@skwschwarz .de

26





The ruling refers not only to pralines, but also to any other kind of

confectionery containing chocolate .

2. Designation of vegetable foodstuffs as dairy products

Milk, yogurt, and other dairy products may not be used to desig-

nate purely vegetable products, and not with clarifying or descrip-

tive additional terms, either .

Several courts, including the Court of Justice of the European

Union, ruled on this issue last year .

In the case brought before the Court of Justice of the European

Union,2 the parties had a dispute about terms such as “tofu butter,”

“vegetable cheese,” “veggie cheese,” and “cream” for purely veg-

etable products . The CJEU ruled that the term “milk” may not be

used for purely vegetable products, since it is a product of animal

origin . Other designations reserved exclusively for milk products

may not be used in the marketing and advertising of purely vegeta-

ble products, even where clarifying or descriptive terms referring to

the vegetable origin are added . The names reserved exclusively for

milk products are governed by Annex VII, Part III, No . 2 (a) to Reg-

ulation 1308/2013 .3 They include among others cheese, yogurt,

cream, and butter . The addition of clarifying or descriptive terms

such as “made from soy” or “made from tofu” does not alter the

fact that these designations may not be used for pure vegetable

products . They are also not products in a category such as “co-

conut milk” or “peanut butter,” which are not listed in Annex I to

Decision 2010/791 and which are covered by the exemption from

Annex VII, Part III, No . 5 subsection 2 Regulation 1308/2013, since

the type is well known due to its traditional use . As grounds for its

decision, the CJEU cites the protection of consumers against like-

lihood of confusion with regard to the composition of the products

they want to purchase .

Vegetarian or vegan confectionery products in which milk or yogurt

are replaced, for example by soy products or similar plant-based

products, may not contain the terms “milk” or “yoghurt .” As an ex-

2 CJEU, June 14, 2017, C-422/163 Regulation (EU) No 1308/2013 of the European Parliament and of the Council

of 17 December 1013 establishing a common organisation of the markets in agricultural products and repealing Council Regulations (EEC) No 922/72, (EEC) No 234/79, (EC) No 1037/2001 and (EC) No 1234/2007

Dr . Magnus Hirsch and Stephanie Pfaff

Chocolate, milk and honey – News on confectionery labeling

Foodstuffs, including confectionery, are subject to strict labeling

requirements and must be labeled correctly to ensure that con-

sumers are provided with comprehensive and accurate information

when buying food . Below are some key decisions on labeling from

the past year .

1. Labeling of chocolate

With regard to the obligation to label cocoa and chocolate, Ham-

burg Higher Regional Court1 ruled that the obligation to label cocoa

and chocolate not only applies to finished products, but also where

chocolate is only used as an ingredient in another finished product .

The case concerned plum pralines, where the packaging label

stated that 31% of the product was made of chocolate . No in-

formation on the percentage of dry cocoa solids in the chocolate

used or in the total product was provided . Under Section 3(4)(1)

German Cocoa Ordinance, certain products listed in its Annex 1,

such as chocolate, must contain the total dry cocoa solids content

by listing the “cocoa: . . . % minimum” content . In the relevant case,

it was disputed whether this labeling obligation also applied if one

of the listed products, here chocolate, is not used as a finished

product but only as an ingredient in another chocolate product,

such as the plum pralines . Hamburg Higher Regional Court arrived

at the conclusion that the cocoa and chocolate products set out

in Section 3(4) Cocoa Ordinance were those for which the indica-

tion of the total cocoa solids content allowed conclusions to be

drawn about the quality of the chocolate used . The purpose of the

statutory provision is to inform consumers about the proportion of

the characteristic ingredient, the cocoa component, in cocoa and

chocolate products . Even if the list of products that are subject to

labelling does not include pralines, this does not mean that choco-

late as an ingredient of pralines does not need to be labeled . This

does not apply to the total content, though .

1 Hamburg Higher Regional Court, December 19, 2016, 3 W 85/16


27




not sufficient to deceive consumers from the region that consumers

could believe that the heather honey originated from the geographi-

cal region . Rather, the average consumer should be considered and

since there are different heathlands in Germany, the consumer would

not refer to a particular region . In addition, the term “Heidehonig”

(heather honey) was a synonym for “Heideblütenhonig” (heather

blossom honey) and indicated the botanical and not the geographi-

cal origin . The manufacturer could not suffer any disadvantage as a

result of the fact that the indication of the name or company name

and the address are compulsory information in accordance with Arti-

cle 9(1)(h) Food Information to Consumers Regulation . Therefore, the

term is not suitable to establish an indication of origin .

Conclusion

In the event of missing or incorrect labeling, warnings or interim

injunctions may be issued, which can result in entire batches having

to be recalled from retailers’ shelves and having to be destroyed .

In addition, high fines may be imposed . Moreover, there is possi-

ble damage to a company’s image that may result from a product

recall . In order to avert such damage, it is necessary to perform a

careful and expert examination of all labels and advertising mes-

sages for foodstuffs, particularly since legislation and case law are

constantly evolving .

ample, they may not be referred to as “chocolate made from soy

milk,” “soy yogurt bars,” or “tofu milk chocolate .”

Another case before Constance Regional

Court4 concerned “soy-based spread”

for breads, where the term “like cream

cheese” was listed on the packaging,

with the word “cream cheese” printed in

larger lettering . Constance Regional

Court ruled that the term “cheese” may

not be used to describe a product in a prominent, eye-catching

way if the product is not a dairy product .

3. Labeling of honey products

Celle Higher Regional Court5 ruled that the designation “Heide-

krone” is an indication of the botanical and not the geographical

origin of honey .

In the case at issue, the plaintiff had objected to a honey being ad-

vertised as “Heidekrone” honey, because this gave the impression

that the honey originated from the Lüneburg Heath (Lüneburger

Heide), in particular in connection with the indication of the com-

pany headquarters in the Lüneburg Heath . Celle Higher Regional

Court did not follow this line of arguments and ruled that this was

4 Constance Regional Court, June 22, 2017, 7 O 25/16 KfH5 Celle Higher Regional Court, November 24, 2016, 13 U 130/16

Stephanie Pfaff

s .pfaff@skwschwarz .de

Dr. Magnus Hirsch

m .hirsch@skwschwarz .de

28





1. Influencer marketing

An advertising campaign that goes as viral as the “KitKat challenge”

is likely every advertising company’s wish . To this end, companies

are increasingly turning to influencers . Influencer marketing offers

great advantages, but the market has long been uncertain about

how influencer marketing should be designed to be compliant with

the laws . Recent court decisions provide at least some clarity in this

respect . The present article therefore attempts – without claiming

to be exhaustive – to give an overview of the legal requirements for

influencer marketing and recommendations on how to deal with

influencers in a legally compliant manner on the basis of recent

jurisdiction .

Legal framework conditions

Influencers are brand ambassadors who “have an enormous reach

due to their strong presence and high reputation in one or more

social networks”2 and allow for target group-relevant marketing .

Due to their exemplary character and authenticity, influencers are

perceived as particularly trustworthy by their fans . It is precisely

that is used by influencer marketing to recommend products and

services . As consequence, advertising contributions are frequently

not sufficiently marked as such, carrying the risk of violating the

statutory requirements under Section 6(1)(1) Telemedia Act, Sec-

tion 58(1) Interstate Broadcasting Treaty, Section 5a(6) Act Against

Unfair Competition .

In principle, advertising as such must be clearly recognizable and

separated from other contents . Clear recognition requires that, un-

less the commercial purpose is already derived directly from the

circumstances, it must be made identifiable .3 As to the question

of how the commercial purpose is to be identified, this routinely

depends on the circumstances of the individual case and the type

of communication used .4 Depending on the platform, influencers

therefore have different options of marking content as advertising .

These options can and should be used cumulatively, where pos-

sible .

2 https://de .wikipedia .org/wiki/Influencer3 Köhler/Bornkamm/Köhler, 35th ed . 2017, UWG [German Act Against Unfair

Competition] Section 5a para . 7 .234 Köhler/Bornkamm/Köhler, 35th ed . 2017, UWG Section 5a para . 7 .27

Dr . Ilja Czernik and Corinna Sobottka

Branded Content – The law strikes back

Advertising that does not feel like advertising, that entertains and is

not annoying to consumers is currently trending in the advertising

world under the term of “branded content .”

KitKat is an example of a brand that has used this trend to its ad-

vantage when launching its new advertising jingle as part of the

“KitKat challenge” on the musical .ly platform . The social media

platform musical .ly allows users to upload and share their own

lip-syncing videos . The “KitKat challenge” was initiated by two well-

known musical .ly influencers, who each shot a video of the new

KitKat jingle, shared it with their fans on the web, and asked them

to join the challenge . In fact, 60,000 KitKat jingle videos were up-

loaded within less than a week, generating 96 million views on the

musical .ly platform .1

Another very successful example is the “Snickers Hungerithm”

campaign, which won one gold, three silver, and one bronze lion in

Cannes . The “Snickers Hungerithm” is an algorithm that monitors

the online mood of people by analyzing social news on a daily basis .

Depending on the mood, Snickers prices rose or fell, and the product

could be redeemed with a special app coupon at 7-Eleven in Austra-

lia . The worse the mood got, the less expensive Snickers became .

The campaign proved to be an enormous success, resulting in 67%

increase in revenue, 55% growth in the category, 30 million impres-

sions, and a range of 4 million .

1 https://www .wuv .de/specials/influencer_marketing/kit_kat_setzt_auf_musically


29




Practical tip

In legal practice, it is therefore advisable to always label advertising

posts in social media at the beginning as “Werbung” (“advertis-

ing”) or “Anzeige” (“advertisement”), if their commercial purpose

does not arise directly from the circumstances . It is also advisable

for companies to contractually obligate influencers to such legally

compliant labelling, since the failures of influencers may also be

attributed to the companies for which advertising is performed .

Influencers and companies commissioning influencers should care-

fully examine whether statements made by the influencers in posts

may actually be made in this manner, especially in areas that are

sensitive to regulatory requirements such as food law . Even if label-

ing requirements are observed, there is a risk that review of the con-

tent of the statements will lead to considerable and costly warning

potential, which the competition associations are set to increasingly

exploit in the future .

2. Ambush marketing

The advertising industry is currently enamored with the statement:

Content is king but context is King Kong . The reason for this is that

so much content is now being produced that it threatens to be

drowned out by all the other content . For this reason, advertising

agencies are now advising advertisers to use certain events to link

their content to them .

As an example, Burger King made a peace offering on World Peace

Day in 2015 . In a full-page advertisement in the New York Times

and the Chicago Tribune, Burger King had called on McDonald’s

to prepare a “delicious and peace-loving” burger – the McWhop-

per – together in Atlanta on September 21, the “International Day

of Peace .”7 In addition to its stated goal of “raising awareness for

World Peace Day and its initiators,”8 Burger King also created an

enormous amount of attention for itself, reaching over 7 .6 billion

impressions and more than US-$144 million earned media .9

7 http://www .wiwo .de/unternehmen/dienstleister/mcwhopper-frieden-zwischen- burger-king-und-mcdonalds/12237580 .html

8 https://www .burgerking .de/002_de/website/documents/presse/pi_burger-king-schlaegt-mcdonalds-einmalige-zusammenarbeit-vor .pdf

9 http://www .campaignbrief .com/2015/12/yrs-burger-king-mcwhopper-camp .html

Advertising posts on platforms such as Facebook, Instagram or

Twitter may be marked as “Werbung” (“advertising”) or “Anzeige”

(“advertisement”) . It is questionable whether the English terms “ad”

or “sponsored” will be sufficient for the German market . German

media institutions of the individual states advise against using these

terms in their guidelines on advertising in social media . On Face-

book or Instagram, it is advisable to additionally use the “branded

content tools” to mark content as “paid partnership with” where

paid advertising is involved . It is also important to position the text

labeling the content as advertising in such a way that the com-

mercial purpose is clearly visible to the average consumer at first

glance .

Recent judgments

This fact was also emphasized by Celle Higher Regional Court5 in

a recent decision . The consumer association “Verband Sozialer

Wettbewerb” had sued a large German drugstore chain, because

an influencer had posted an advertisement for the drugstore chain

on Instagram . The advertisement was only marked by the hashtag

“#ad” at the end of the article, which was only the second of six

hashtags . In this case, Celle Higher Regional Court did not consider

the advertisement to be sufficiently identified as such solely by use

of the hashtag “#ad,” which was said to be hidden in a “hashtag

cloud” at the end of the Instagram post .

The contents of influencer statements are reviewed by courts as

well . Hagen Regional Court6 recently ruled on the use of the term

“detox” by an influencer in an Instagram post, considering it a

“health claim” in combination with the Instagram image of an adver-

tised drink . The court held that the average consumer expected the

term “detox” used for food – in the sense of its actual meaning – to

be used to “detoxify” the body and subsequently improve the state

of health . Such a health claim is not permitted, however . In addition,

the court considered the use of the term “detox” to be misleading

information on food, since it ascribes effects or properties to the

food item, which it does not possess – specifically, a “detoxifica-

tion” or “purification” of the body beyond the body’s own function .

5 June 08, 2017 – Case 13 U 53/176 September 13, 2017 – Case 23 O 30/17


30




Recent developments

While classical ambush marketing and the assessment of trade-

mark and advertising law have accompanied us for more than 10

years, there has been an interesting development in the sports sec-

tor . The Federal Cartel Office is currently examining whether the

application of Article 40 .3 . of the Olympic Charter by the German

Olympic Sports Confederation constitutes anti-trust conduct that

is to be prohibited .11 If antitrust violation were to be affirmed, this

would have a significant impact on the advertising opportunities

and marketing not only of athletes but also companies that are not

sponsors .

Practical tip

It remains to be seen how the Federal Cartel Office will decide .

The issues are manifold, and the explosive power of sports policy

is enormous . Apart from this issue, however, it remains a fact that,

especially in the case of non-sponsors, it must always be reviewed

whether there are implications under trademark and competition law .

11 http://www .spiegel .de/sport/sonst/bundeskartellamt-verfahren-gegen-dos-b-und-ioc-eingeleitet-a-1174722 .html

Legal framework conditions

As the McWhopper example shows, it makes sense to use current

events as advertising vehicles . Where generic events are used to

do so, this is no problem . It becomes more difficult, however, if the

events are protected by trademark law or, for example, in sports, if

they are governed by statutory restrictions under IOC’s Advertising

Rule 40 .

Article 40 .3 of the Olympic Charter states: “Except as permitted by

the IOC Executive Board, no competitor, team official or other team

personnel who participates in the Olympic Games may allow his

person, name, picture or sports performances to be used for ad-

vertising purposes during the Olympic Games.” Accordingly, during

the 2014 Olympic Games in Rio, non-sponsors are said to have

been prohibited from even using the words “games” or “summer .”10

In terms of advertising law, problems may also arise if the impres-

sion is created that companies are sponsors of the event . This is

seen as misleading .

10 http://www .spiegel .de/sport/sonst/bundeskartellamt-verfahren-gegen-dos-b-und-ioc-eingeleitet-a-1174722 .html

Corinna Sobottka

c .sobottka@skwschwarz .de

Dr. Ilja Czernik

i .czernik@skwschwarz .de

31





3. Prefer more extensive implementation work

When drafting records of processing activities, each company

should also consider whether and how it will restrict (block) and

erase personal data .

While these are not new requirements that are being introduced

by the GDPR, companies have been rather reluctant to implement

them to date . This is also demonstrated by the fact that some well-

known software manufacturers do not (yet) provide the appropriate

routines in their enterprise solutions .

It takes time to develop an erasure and blocking concept . Work-

shops may be used to provide assistance . Technical and organi-

zational implementation, which should be as practical as possible,

may take place while other project phases are handled in parallel,

e .g ., implementing processes to meet new requirements due to the

rights of data subjects .

4. Rights of the data subject

In the future, companies will also have to deal with increased

information duties (e .g . Articles 12 – 14 and 34 GDPR) . In addition,

processes in accordance with rights of data subjects should be

implemented (Articles 15 – 22 GDPR) .

If a data subject asserts a right, companies will in general have a

period of one month to take the appropriate action (Article 12 (3)

sentence 1 GDPR) .

As part of a project, existing processes are also critically scruti-

nized . How much effort is required to provide complete information

today (see former Section 34 German Federal Data Protection Act;

until May 25, 2018)? The response is regularly unsatisfactory .

Dr . Stefan Peintinger, LL .M .

Field report on GDPR implementation projects

A new era in data protection will commence on May 25, 2018 .

From that date on, the General Data Protection Regulation (GDPR)

will apply . Companies of all industries will have to implement the

GDPR . In many German companies, preparations for implementa-

tion are already in full swing . SKW Schwarz advises its clients on

this process . The following points are repeatedly critical:

1. Drawing up a project plan

While some companies use their project to first perform data

protection audits, others are directly starting with their GDPR

implementation . Practical experience shows that the expectation of

working through projects step after individual step is often disap-

pointed . Some tasks need to be coordinated in a time-consuming

manner .

Projects will regularly start with the drafting of records regarding

processing activities .

2. Records of processing activities

Records of processing activities are the key starting point for exam-

ple to provide information to the data subject (Art . 13 GDPR) and

to keep an overview regarding processing activities (Art . 30 GDPR) .

It is very helpful if management clearly communicates to its

employees that the drafting and maintenance of such records is not

a matter of occupational therapy . Data protection authorities and

compliance auditors are generally starting their work with examin-

ing those records .


32




7. How can this all be managed by May 25, 2018?

Companies often ask themselves how all of this can be imple-

mented by May 25, 2018 . With respect to the rights of data sub-

jects and audit requests by data protection authorities, it is ad-

visable to identify priorities . They help to achieve key progress in

implementing the GDPR . Companies should not expect that the

GDPR will only be a temporary phenomenon .

8. Outlook

Nowadays, data protection should be part of every good corporate

culture . The GDPR offers companies the opportunity to use per-

sonal data . These opportunities can be identified within an imple-

mentation project . The GDPR is not a showstopper for innovative

business ideas .

5. Additional particularly relevant topics

Other particularly relevant topics are, for example, the examination

of data processing agreements (Article 28 GDPR; former Section

11 Federal Data Protection Act) . The amount of fines increases

drastically under the GDPR (Article 83 GDPR) . Therefore, e .g .,

limitations of liability by processors must be checked . In addition,

data protection impact assessments may be prepared (Article 35

GDPR, so called “PIA”) . In certain cases, PIAs have to be carried

out prior to handling personal data . Furthermore, the handling of

personal data is governed by the principles of “privacy by design”

and “privacy by default” (Article 25 (1), (2) GDPR) . Instructions and

documentation, e .g ., data protection manuals, are to be prepared

to train employees on a regular basis . In addition, works council

agreements are to be checked for GDPR compliance .

6. Documentation obligations

The GDPR makes it easy for data protection authorities . Under Ar-

ticle 5 (2) GDPR, each company concerned is responsible for and

must be able to demonstrate GDPR compliance . Relevant docu-

ments are to be provided to the data protection authorities, which

may inspect them at their discretion . Their first question will regu-

larly be aimed at submitting the records of processing activities .

Compliance with documentation requirements can be implemented

in a project step by step, drafting relevant documents one after the

other .

Dr. Stefan Peintinger, LL.M.

(Georgetown)

s .peintinger@skwschwarz .de

33




Commercial and Distribution Law

tion on Contracts for the International Sale of Goods (CISG) .” Fre-

quently, however, the other party will not consent to such a clause

in the contract . Usually, the other party too will also prefer that the

law of its state, with which it is familiar, should apply instead . Mutual

refusal to accept each other’s laws may, in the worst case, lead to

a situation where a business transaction that would actually make

sense is not entered into . The CISG was, however, drafted to pre-

vent such situations . It is generally balanced and quite similar to the

purchase law of the German Civil Code . There are key deviations

in some details, however . As an example, the right to rescind a

contract is more difficult compared to the right to withdraw from a

contract under the German Civil Code . The rescission of a contract

is only possible in the case of substantial breaches and is usually

not possible in the case of defects of the goods . This deterioration

of the buyer’s position is, however, compensated for by claim for

damages, which – unlike under the German Civil Code – may also

be given irrespective of fault . Frequently, this results in the buyer of

a defective product not being able to return it, but being entitled to

cover transactions with the seller that liquidate the resulting disad-

vantages . In summary, a good deal should not fall through because

the parties cannot agree on the applicability of the German Civil

Code and the German Commercial Code . The application of the

CISG as a supranational compromise is a good way out in such

cases . If the “power status” between the parties allows it, however,

it is advisable to make some modifications for one’s own benefit .

Oliver Korte

Cross-border sales contracts: Don’t forget the choice of law rules!

The confectionery industry has a heavy international focus, and in-

creasingly so . In recent years, both exports (sales +5 .6% from 2015

to 2016) and imports (revenue increase of 5 .6% from 2015 to 2016)

of confectionery have grown strongly (source: SG-Directory) . Ever

more smaller companies in the confectionery sector have business

partners abroad .

Contract management, however, does not always keep pace

with the increasing internationalization . Companies frequently use

outdated contract forms that have not been optimally adapted to

cross-border business transactions .

For example, there are often no clauses that govern which law

should apply in the relationship between the parties . It is strongly

recommended to use clear and unequivocal rules . German com-

panies like to refer to German law, which is often useful, as its

contents are generally known and no unpleasant surprises are to

be expected .

But beware: When only the phrase “This contract shall be gov-

erned by the German law” is used in a sales contract, this does not

mean that primarily the well-known provisions of the German Civil

Code and the German Commercial Code will apply . Instead, the UN

Convention on Contracts for the International Sale of Goods (CISG)

will then apply in the first instance . This is due to the fact that the

CISG is part of German law since Germany is a signatory of the

Convention . Companies who wish to apply the German Civil Code

and the German Commercial Code must instead include the follow-

ing wording: “This contract shall be governed by and construed in

accordance with the laws of Germany, excluding the UN Conven-

Oliver Korte

o .korte@skwschwarz .de

34




Employment Law

entrepreneurial freedom to make a differentiation in the compensa-

tion . It is only that this may not be done based on gender, but rather

must be based on factual grounds .

Requirements – When Is a Pay System Free of

Discrimination?

Section 4(4) Pay Transparency Act determines the criteria that pay

systems and individual pay components must fulfill . In general,

there must be no possibility of discrimination based on gender . The

criteria for differentiation that are applied must take into account the

activities to be performed in an objective way, be identical for wom-

en and men, be weighted in a manner that is free of discrimination

and be transparent overall . Therefore, a simple and comprehensible

system should be used .

Operational Testing Procedure

Private employers with more than 500 employees are in any case,

“invited”, but not obliged, in accordance with Section 17(1) Pay

Transparency Act to check and report on equal pay regularly . The

operational testing procedure must consist of inventory, analysis,

and a results report . There are no concrete time requirements as

to how often the testing procedure should be performed . “Regular”

monitoring should be performed in accordance with Section 17(1)

(1) Pay Transparency Act . The justification for the act recommends

a period of five years . As a result of the fact that the entire testing

process, however, is voluntary, companies can also perform moni-

toring at longer intervals . In any case, based on this legal situation,

it can hardly be recommended that voluntary testing procedures be

performed in accordance with Sections 17, 18 Pay Transparency

Act because the performance may have detrimental consequences

for the employer . If the testing procedure discloses discrimination

based on gender, the employer will be obliged in accordance with

Section 19 Pay Transparency Act, to take suitable measures to rec-

tify this . Finally, in any case, the testing procedure will have nega-

tive consequences for the employer . This is because the procedure

will either show that there is no discrimination, then the employer

will still “only” be encumbered with the costs, or if discrimination

is determined, the company will be obliged to inform its employ-

ees of this in accordance with Section 20(2) Pay Transparency Act .

This therefore reveals grounds for complaints that may have sub-

sequently expired or that would not have been asserted .

Thomas Wittmann

The new Pay Transparency Act

The New Pay Transparency Act entered into force on July 6, 2017 .

The law that is not widely known yet is aimed at equal pay for

women and men for the same work . In principle, it affects all em-

ployers and involves some new obligations . For companies with

over 200 employees, it creates direct claims to information for em-

ployees . For large companies with over 500 employees, there may

even be an obligation to perform an audit procedure .

1. Key items of the Pay Transparency Act:

– express requirement for equal pay

– individual claim to information for employees, starting from

January 6, 2018

– reporting duty on the status of gender equality and equal pay,

for the first time for 2018

2. Obligations for employers

Prohibition of pay discrimination and equal pay requirement

With regard to all pay components and pay conditions, discrimi-

nation on the basis of gender for equal or equivalent work is pro-

hibited . Agreements that breach this requirement are ineffective in

accordance with Section 8(1) Pay Transparency Act . The question

is now what equal or equivalent work actually means . In accor-

dance with Section 4 Pay Transparency Act, this is the case if male

and female employees perform identical or equivalent activities in

different workplaces or successively in the same workplaces . The

term “equivalent activities” in particular will lead to delimitation

problems in practice . According to the justification of the bill, this

should be based on an overall view of all factors . For example, the

criteria for assessment should include training requirements, prior

knowledge, skills, qualifications, responsibility, as well as physical

and mental burdens . The concrete determination of the equivalent

activities must take place based on an objective benchmark, sub-

jective value of the work performance to the employer does not

play a role . In any case, the productivity of each employee can be

taken into account and may be grounds for the granting of perfor-

mance bonuses . Of course, the employer is free on the basis of its

Employment Law

35




other hand . The claim to information can be asserted every two

years for the first time as of January 6, 2018 and generally every

two years . The employees must submit their request in text form .

The information will not be provided on data protection grounds if

the comparison activity is performed by fewer than six employees

of the same gender .

Claim to Pay Adjustment

If, after the granting of the corresponding information that pay dis-

crimination actually exists, the employee can request a pay adjust-

ment, as well as compensation in accordance with Section 15(2)

General Equal Treatment Act . A claim of this kind to pay adjustment

was also recognized before the entry into force of the Pay Trans-

parency Act and is derived from Section 2(1)(1)(2) General Equal

Treatment Act and Section 8(2) General Equal Treatment Act . In-

terestingly, exclusion periods for the asserting of the claim can vary

in individual contracts or collectively because legislators refrained

from a paragraph saying the opposite, which was still in the draft

of the act . In addition, the standard limitation period with a period

of three years will apply in accordance with Sections 195, 199 Civil

Code .

4. Simplifications for Employers Bound by Tariffs and Who Apply Tariffs

The act differentiates between employers who are bound by tariffs

(Section 5(4) Pay Transparency Act), and who apply tariffs (Section

5(5) Pay Transparency Act) and employers who are neither bound

by tariffs and also do not apply tariffs . Employers who are bound

by tariffs and who apply tariffs are privileged . With regard to them,

it is assumed that a tariff pay system is free of discrimination, Sec-

tion 4(5)(1) Pay Transparency Act . Activities that are allocated to

different pay groups as a result of tariff regulations are considered

unequal . Employers bound by tariffs and who apply tariffs also

have advantages with regard to the fulfillment of the obligation to

provide information . For them, it is namely sufficient in accordance

with Section 11(2)(2) Pay Transparency Act if they refer to the pay

arrangements in accordance with the tariff contract and to where

these can be found . Finally, the report on equality and equal pay

also only has to be created every five years instead of every three

years in the case of employers that are bound by tariffs and that

apply tariffs .

In order to be prepared for individual claims to information, it is,

however, recommended that employers should nevertheless per-

form an internal inventory for the operational testing procedure and

to try to determine comparison activities based on objective criteria .

In any case, the performance of a full testing procedure in accor-

dance with the Pay Transparency Act cannot be recommended . In

addition, in this way it is possible to monitor whether the require-

ment for pay discrimination would be breached and any provisions

could be ineffective . For the purposes of proof, the relevant criteria

should be stated in writing, and documented in case of new hires,

promotions, or pay rises .

Obligations to Report on Equal Pay

Employers with more than 500 employees who are obliged in ac-

cordance with Sections 264 et seqq . and Section 289 Commercial

Code to issue a management report, are obliged to draft a report

on gender equality and equal pay in accordance with Section 21(1)

Pay Transparency Act . The report must be created every three years

in accordance with Section 22 Pay Transparency Act for employers

who are bound by tariffs or who apply tariffs . Therefore, companies

who are obliged to issue reports should consider at an early stage,

which measures will be considered in order to promote the equality

of men and women and to create equal pay within the company . A

report of this kind is to be created for the first time for 2018 .

3. Rights and Claims of Employees

Claim to Information

Initially, the law provides the employees with a claim to information

in accordance with Section 10 Pay Transparency Act with regard

to the criteria and the procedure for determining pay and also

with regard to the average monthly gross pay of the comparison

group . The claim exists for employees in companies with more

than 200 employees . In this case, the request for information must

be aimed at different bodies in different organizations . Employees

of employers who are bound by tariffs or who apply tariffs must

contact the works council in accordance with Section 14(1) Pay

Transparency Act . If there is no works council, the employees can

contact the employer . On the other hand, employees of employ-

ers who are not bound by tariffs and who do not apply tariffs, as

well as managing employees must contact the employer directly

in accordance with Sections 13(4), 15(1) . If there is a works coun-

cil in such companies, then the employees must contact it, on the

Employment Law

36




5. Practical Tips

It is clear that employers will now incur significant additional bu-

reaucratic and financial expenses . If there is no reporting obligation,

a corresponding formal procedure is not recommended in accor-

dance with the Pay Transparency Act because the employer only

incurs disadvantages by doing this . In any case, it may neverthe-

less be sensible to perform in-depth documentation of the current

situation in order to be prepared for the employees’ claims to in-

formation and to create a good body of evidence for any court

proceedings . In addition, reasons relating to reputation may also be

in favor of measures of this kind . Agreeing on deadlines in individual

contracts or collective agreements can also be considered in order

to guarantee legal certainty .

Thomas Wittmann

t .wittmann@skwschwarz .de

37




Tax Law

in Germany as of next year if those payments are tax-free or sub-

ject to a very low tax rate at the beneficiary abroad . The bill states:

“Taxes are to be owed to the State in which the activity on which

value creation is based takes place, and not to the State offering

the highest tax incentives .” The new statutory provisions are based

on an action plan in line with the OECD approach against harmful

tax competition among States .

The only exception to the limitations on tax deductions will be al-

lowed by the “nexus” approach: Accordingly, the use of license or

patent boxes continues to be permitted where the company ben-

efitting from tax incentives is actively engaged in developing the

relevant IP . This does not apply, for example, where the right has

been acquired, developed by related entities, or obtained by the

granting of trademark rights .

Companies should therefore seek comprehensive advice on tax

implications and options, preferably before the legislation enters

into force .

Heiko Wunderlich and Margret Knitter, LL .M .

The end of using license boxes is near!

By introducing a license barrier from January 1, 2018, multinational

companies are to be prevented from using “license boxes” or “patent

box companies” outside Germany . In the past, those foreign license

boxes or patent boxes were regularly used to reduce the tax burden

on profits generated from the exploitation of patents, licenses, con-

cessions, and trademark rights (particularly by companies in Malta,

The Netherlands, Belgium, and Switzerland) . The German compa-

nies then pay royalties to the foreign patent box company for granting

the rights held abroad, which are deducted as operating expenses

in Germany, creating a tax advantage over the years . The licensing

barrier is intended to prevent this tax structuring option in the future .

According to the bill, intra-group expenses for patents, licenses,

concessions, and trademark rights will no longer be tax-deductible

Heiko Wunderlich

h .wunderlich@skwschwarz .de

Margret Knitter, LL.M.

m .knitter@skwschwarz .de

38




Practice Group Industrial Property / Competition Law Practice Group Employment Law

Practice Group Tax Law

Practice Group IT & Digital Business

Practice Group Media and Entertainment Law

Practice Group Commercial and Distribution Law

Dr . Dorothee Altenburg1 Christina Bauer, LL .M .Jens Borchardt, LL .M .2, 7

Dr . Markus Brock1

Dr . Ilja Czernik1, 7

Georg DelhaesMarkus von Fuchs, LL .M .1

Hanna Maria Haensell, LL .M .1

Fabian Hartmann, mag . jur .7

Dr . Philipp Heigl, LL .M .Florian Hensel7

Dr . Johann HeydeDr . Ulrich HildebrandtDr . Magnus Hirsch1

Margret Knitter, LL .M .1

Stefan Kridlo6

Madeleine MetznerDr . Stefanie Nabrotzki, LL .M .Sebastian OsterriethDr . Andreas Peschel-MehnerStephanie PfaffDr . Sascha Pres2, 7

Sandra Sophia RedekerYvonne Schäfer1

Stefan C . Schicker, LL .M .1, 2, 3

Dr . Konstantin Wegner, LL .M .

Christian von Bitter8

Bettina-Axenia BugusBoris Christian8, 17

Tabea Frühinsfeld8

Dr . Martin Greßlin8

Dr . Bernd Joch8

Hanna Karl8

Dr . Martin Römermann8

Katharina Rosbund8

Andreas SeidelMichael Wahl8

Thomas Wittmann

Dr . Christian Becker9

Christoph Meyer9, 10

Sven Pohl

Dr . Gerd Seeliger11, 17

Nicole Thomann9

Heiko Wunderlich9

D-10719 BerlinKranzler Eck/Kurfürstendamm 21 T +49 (0)30 8 89 26 50 - 0 F +49 (0)30 8 89 26 50 - 10

D-40212 Düsseldorf Steinstraße 1/Kö T +49 (0)221 82 89 59 - 0 F +49 (0)221 82 89 59 - 60

D-20095 HamburgFerdinandstraße 3T +49 (0)40 33 40 1 - 0F +49 (0)40 33 40 1 - 530

D-60598 Frankfurt/MainMörfelder Landstraße 117T +49 (0)69 63 00 01 - 0F +49 (0)69 63 55 22

D-80333 MunichWittelsbacherplatz 1T +49 (0)89 2 86 40 - 0F +49 (0)89 2 80 94 - 32

1 Specialist Lawyer for IP Law2 Specialist Lawyer for IT Law3 also Solicitor in England and Wales 4 Specialist Lawyer for Banking Law and

Capital Market Law5 Specialist Lawyer for Commercial Law

and Corporate Law6 Rechtsanwalt and Civil Law Notary7 Specialist Lawyer for Copyright and

Media Law8 Specialist Lawyer for Employment Law9 Specialist Lawyer for Tax Law

10 Specialist Lawyer for Family Law11 Rechtsanwalt and Tax Consultant12 Data Protection Auditor (TÜV)13 Certified Expert in Public Procurement Law14 Certified Information Privacy Professional

(CIPP/E, CIPM, GDDcert .)15 Certified Expert in International

Business Law16 Appointed Public Accountant17 Rechtsanwalt and Mediator

Legal NoticeSKW Schwarz Rechtsanwälte Steuerberater Wirtschaftsprüfer Partnerschaft mbB

Munich Local Court PR 884

Editorial Department: Margret Knitter, LL .M .Email: m .knitter@skwschwarz .de

If you no longer wish to receive the newsletter, please email us or notify your contact at our firm .

We will also gladly inform you of our other tickers and newsletters .

Occupational title: Rechtsanwalt/-anwältin der BRD . Competent bar associations: Bar Associations of Berlin, Düsseldorf, Frankfurt am Main, Hamburg, and Munich . The profes-sional rules and regulations are available in German at http://www .brak .de by clicking on “Berufsrecht” and scrolling down to “Informationspflichten” regarding the professional informational obligations in accordance with Section 5 German Telemedia Act .

© SKW Schwarz 2018

Offices

Nikolaus Bertermann2, 12

Ivan BrankovDr . Markus Brock1

Dr . Oliver M . Bühr2, 6

Kirill EngelmannFlorian Hensel7

Dr . Johann HeydeDr . Oliver HornungInsa Janßen, LL .M .Dr . Wulf KamlahRené M . Kieselmann13

Franziska Ladiges, LL .B .Moritz MehnerDr . Daniel MeßmerElisabeth Noltenius, LL .M .Dr . Matthias Nordmann, M .A .5

Dr . Matthias Orthwein, LL .M .Dr . Stefan Peintinger, LL .M .Dr . Andreas Peschel-MehnerSven Preiss, LL .M .7

Yvonne Schäfer1

Johannes SchäufeleStefan C . Schicker, LL .M .1, 2, 3

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Dr . Andreas BareissJens Borchardt, LL .M .2, 7

Bettina-Axenia BugusDr . Ilja Czernik1, 7

Dr . Martin DiesbachDr . Ulrich Fuchs7

Markus von Fuchs, LL .M .1

Hanna Maria Haensell, LL .M .1

Dr . Christoph Haesner, M .C .L7

Fabian Hartmann, mag . jur .7

Florian Hensel7

Dr . Johann HeydeDr . Magnus Hirsch1

Dr . Bernd Joch8

Norbert Klingner

Margret Knitter, LL .M .1

Stefan Kridlo6

Dr . Eberhard Kromer, MBA5, 7

Dr . Stefanie Nabrotzki, LL .M .Elisabeth Noltenius, LL .M .Dr . Andreas Peschel-MehnerSven Preiss, LL .M .7

Dr . Zahra RahvarDr . Ulrich Reber15

Johannes SchäufeleProf . Dr . Mathias Schwarz16, 17

Corinna SobottkaPia SökelandWenzel SteinmetzGeorg WallrafDr . Konstantin Wegner, LL .M .

Marion AnzingerDr . Philipp AsbachBoris Christian8, 17

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