The appellant in the present case lodges claims based on a Union trade mark ‘Pizzaschmelz’, filed on 19 February 2014 and entered in the register for, inter alia, the following goods: ‘Cheese; vegan cheese; cheese based on vegetable fats’.
The defendant uses the designation “Pizzaschmelz” for vegan pizzas. At first instance before the Düsseldorf Regional Court, the defendant filed a counterclaim for a declaration of invalidity of the Union trade mark “Pizzaschmelz” pursuant to Article 128 UMV on the ground that the trade mark was devoid of any distinctive character for the above-mentioned goods in the German-speaking area (Article 7 (1) b) UMV). The Regional Court followed this argumentation, declared the Union trademark “Pizzaschmelz” invalid for the goods: “cheese; vegan cheese; cheese based on vegetable fats” and dismissed the action.
At the appeal instance before the Düsseldorf Higher Regional Court, the plaintiff stated for the first time that the Union trademark “Pizzaschmelz” had acquired distinctiveness through use (Art. 7 (3) UMV). In this respect, the applicant stated that it was represented throughout Europe with the product “Pizzaschmelz” and supplied food retailers, industrial processors and the catering trade in 22 countries. The product “Pizzaschmelz” was the first product of its kind in 2011. The plaintiff was able to establish it in the German food trade throughout the country in a very short time. From there, the “Pizzaschmelz” quickly reached large parts of Europe. Many consumers are familiar with the brand “Pizzaschmelz”. The prominent television chef S. W. held the plaintiff’s „Pizzaschmelz“ in her camera, and the Grimme Prize winner J. B. shared a photo of the branded product “Pizzaschmelz” on Twitter. The defendant did not contest this presentation.
The Düsseldorf Higher Regional Court dismissed the plaintiff’s appeal, stating in particular that the plaintiff’s trademark had not acquired distinctive character through use. The applicant had not submitted sufficiently substantiated arguments concerning the acquisition of distinctiveness through use. It failed to provide concrete information on the duration and scope of use, market shares and advertising expenses. There was also no information on the extent to which the designation “Pizzaschmelz” had been used as a trademark and not merely descriptively. The Düsseldorf Higher Regional Court had not informed the applicant that, in its view, its submissions on the alleged acceptance by the public were not sufficiently substantiated.
The Federal Court of Justice considered this to be a violation of the court’s duty to provide information under § 139 (2) ZPO. In the absence of any indication from the court, the applicant did not have to reckon with the fact that its submission on the acceptance of the claimed trademark by the public would not be considered sufficiently substantiated by the Court of Appeal. The applicant’s argument concerning distinctiveness acquired through use was not a priori unsuitable to demonstrate that the applicant’s mark had acquired distinctiveness through use. For this reason, the Düsseldorf Higher Regional Court had to point out that, in its view, the submission was not substantiated. Since this had not been done, the judgment on appeal had to be set aside and the case had to be referred back to the Court of Appeal for a new hearing and decision.
If the applicant’s submissions had been unsuitable from the outset to show that the trademark had acquired acquired distinctive character through use, the Court of Appeal would obviously not have had to give any indication. The question whether or not the court must give an indication may not always be easy to answer. The author understands the decision to mean that in case of doubt it is more likely that the court should give an indication, which is to be welcomed in the interests of fair proceedings.
