Hohenloher Landschwein – Lexology

In a recently published judgment, the Federal Court of Justice ruled on the relationship between the protection of geographical indications as collective marks under the Trademark Law on the one hand, and the protection of geographical indications and designations of ‘origin under the regulation on quality systems for agricultural products and foodstuffs, on the other hand (Regulation n ° 1151/2012 of 21 November 2012, hereinafter “Regulation 1151/2012”) (Case n ° I ZR 163/19 of July 29, 2021).

Background

The background was as follows: The applicant, the “Bäuerliche Erzeugergemeinschaft Schwäbisch Hall” is the owner of the German collective marks “Hohenloher Landschwein” and “Hohenloher Weiderind”, registered for meat, among others. Names are not registered as protected geographical indications or designations of origin on the basis of Regulation 1151/2012. Applicant members can use the designations as long as they adhere to producer guidelines established by the applicant, which stipulate requirements for breeding, husbandry, feeding, etc.

The defendants, a rural butcher’s shop and its manager (hereafter: defendants), do not belong to the plaintiff. The defendant advertised his meat, among others with the claims “Hohenloher Landschwein”, “Hohenloher Weiderind” as well as “Zartes Schweinefilet – Das ‘Beste vom Hohenloher Landschwein'” “).

After an unsuccessful warning, the plaintiff filed an action asking, among other things, that the defendants be prohibited from using the names “Hohenloher Weiderind” and / or “Hohenloher Landschwein” for meat.

The regional court dismissed the action; the Court of Appeal had convicted the accused as requested; the Federal Tribunal dismissed the defendant’s appeal.

Confirmed injunction

The Federal Supreme Court held that the defendant was entitled to an injunction under s. 97 (2) MarkenG (Trademark Act) in conjunction with Art. 14 (5) sentence 1, art. 14 (2) sentence 1, no. 1 Trademark Law. The defendants used the signs at issue in the course of trade for the same goods for which the collective marks enjoyed protection, without fulfilling the conditions contained in the statutes of the plaintiff’s marks or being themselves members of the plaintiff. .

The defendant also could not successfully rely on the cult’s protection bar. 100 (1) sentence 1 Trademark Law. According to this provision, the registration of a geographical indication as a collective mark does not confer on its owner the right to prohibit a third party from using these indications in the course of trade, provided that the use is consistent. to good morals and not violate the sect. 127 Trademark Law. In particular, according to sect. 100 (1) sentence 2 Trademark Law, such a mark cannot be set up against a third party who has the right to use a geographical indication.

According to the Federal Court, the use by the butcher shop was contrary to “good morals” within the meaning of art. 100 (1) sentence 1 Trademark Law, i.e. honest practices in trade and commerce. Admittedly, the defendants were generally authorized to use descriptive terms in the marketing of their products and the plaintiff made the choice of the appropriate names more difficult by applying for a large number of collective marks; however, the defendants had used the signs in an identical form without clearly indicating to the consumer addressed by means of an indication that their products did not originate from a member of the plaintiff and did not fully comply with its producer guidelines. The protection conferred by the collective marks in question encompassed all the legally protected functions mentioned in Art. 97 Law on Trademarks (guaranteeing the commercial or geographical origin, type, quality or other characteristics of products or services). The collective marks of the plaintiff enjoyed a good reputation; the defendants would exploit this and use the mark to promote their sales.

Different structure of the protection of collective geographical marks and the protection of geographical designations under Regulation 1151/2012

In this context, the Federal Court considered that the application of sect. 100 (1) The trademark law was not excluded by Regulation 1151/2012. This resulted from the structure of the relationship between the protection of collective geographical marks and the protection of geographical designations under Regulation 1151/2012.

The names “Hohenloher Landschwein” and “Hohenloher Weiderind” were protected by national law as collective geographical marks. In accordance with sect. 99 Trademark Law, collective marks may also consist exclusively of signs which can be used by the public to designate the geographical origin of goods or services. National protection of collective marks complies with the requirements of Directive 2015/2436 (Trademark Directive).

The applicant had not filed an application under Regulation 1151/2012 for the registration of the names “Hohenlohe Landschwein” and “Hohenloher Weiderind”. Consequently, the plaintiff could not avail itself of the protection provided by this regulation.

However, the Federal Court of Justice recalled that collective marks consisting of signs or indications which may be used in trade to designate the geographical origin of goods and services, on the one hand, and indications of origin and indications Geographical areas, on the other hand, are not only subject to different legal rules, but also pursue different objectives.

While the main function of the collective mark (also geographical) is to guarantee the commercial origin of the products or services of an association company, the main function of appellations of origin and geographical indications is to guarantee the geographical origin of the products and the specific characteristics resulting therefrom.

The Federal Tribunal refers to Art. 14 of the Regulation, which governs the relationship between trademarks, appellations of origin and geographical indications. According to this provision, collective geographical marks applied for, registered or established by use if this possibility is provided for by the legislation concerned, in good faith in the territory of the Union, before the date of filing an application for protection of ‘an appellation of origin before the Commission, may continue to be used even if an appellation of origin or a corresponding geographical indication is registered at a later date and the use of the mark conflicts with the protection of those appellations of origin or geographical indications in accordance with art. 13 (1) of Regulation 1151/2012. In such cases, the use of the protected designation of origin or the protected geographical indication is authorized as well as the use of the marks concerned.

The protection of collective geographical marks therefore exists independently of the protection of geographical indications and appellations of origin under Regulation 1151/2012.

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