Background
The background was as follows: The plaintiff, the “Bäuerliche Erzeugergemeinschaft Schwäbisch Hall” is the owner of the German collective marks “Hohenloher Landschwein” and “Hohenloher Weiderind”, registered for meat, among other things. The names are not registered as protected geographical indications or designations of origin based on Regulation 1151/2012. Members of the plaintiff can use the designations provided they adhere to the producer guidelines established by the plaintiff, which stipulate requirements for animal breeding, animal husbandry, feeding and the like.
The defendants, a rural butcher’s shop and its manager (hereinafter: defendants), do not belong to the plaintiff. The defendant advertised its meat inter alia with the claims “Hohenloher Landschwein”, “Hohenloher Weiderind” as well as “Zartes Schweinefilet – Das ‘Beste vom Hohenloher Landschwein'” (= “Tender pork fillet – The ‘Best of the Hohenlohe Country Pig'”).
After an unsuccessful warning, the plaintiff filed an action requesting, inter alia, that the defendants be prohibited from using the designations “Hohenloher Weiderind” and/or “Hohenloher Landschwein” for meat.
The Regional Court had dismissed the action; the Court of Appeal had sentenced the defendant as requested; the Federal Supreme Court dismissed the defendant’s appeal.
Injunctive relief affirmed
The Federal Supreme Court found that the defendant was entitled to injunctive relief pursuant to sect. 97 (2) MarkenG (Trademark Act) in conjunction with sect. 14 (5) sentence 1, sect. 14 (2) sentence 1, no. 1 Trademark Act. 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 plaintiff’s trade mark statutes or being members of the plaintiff themselves.
The defendant could also not successfully rely on the protective bar of sect. 100 (1) sentence 1 Trademark Act. According to this provision, the registration of a geographical indication as a collective mark does not grant its proprietor the right to prohibit a third party from using such indications in the course of trade, provided that the use is in accordance with public morality and does not infringe sect. 127 Trademark Act. In particular, according to sect. 100 (1) sentence 2 Trademark Act, such a trademark cannot be held against a third party who is entitled to use a geographical indication.
According to the Federal Supreme Court, the use by the butchery was contrary to “good morals” within the meaning of sect. 100 (1) sentence 1 Trademark Act, i.e. to honest practices in trade and commerce. It was true that the defendants were generally allowed to use descriptive terms for the marketing of their products and that the plaintiff made the selection of suitable designations more difficult by applying for a large number of collective marks; however, the defendants had used the signs in identical form without making it clear 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 granted by the collective marks at issue encompassed all the legally protected functions mentioned in sect. 97 Trademark Act (guaranteeing the commercial or geographical origin, the type, quality or other characteristics of the goods or services). The plaintiff’s collective marks had a good reputation; the defendants would exploit this and use the mark to promote their sales.
Different structure of the protection of geographical collective marks and protection of geographical designations under Regulation 1151/2012
In this context, the Federal Supreme Court held that the application of sect. 100 (1) Trademark Act 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 designations “Hohenloher Landschwein” and “Hohenloher Weiderind” were protected under national law as collective geographical marks. Pursuant to sect. 99 Trademark Act, collective marks may also consist exclusively of signs which may serve the public to designate the geographical origin of the goods or services. The national protection of collective marks complies with the requirements of Directive No. 2015/2436 (Trade Marks Directive).
The applicant had not filed an application under Regulation 1151/2012 for registration of the designations “Hohenlohe Landschwein” and “Hohenloher Weiderind”. Accordingly, the plaintiff could not rely on the protection provided for in this regulation.
However, the Federal Court of Justice pointed out that collective marks consisting of signs or indications which may serve in trade to designate the geographical origin of goods and services, on the one hand, and indications of origin and geographical indications, on the other, 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 goods or services from an undertaking of the association, the main function of appellations of origin and geographical indications is to guarantee the geographical origin of the products and the specific characteristics based thereon.
The Federal Supreme Court refers to art. 14 of the Regulation, which regulates the relationship between trademarks, designations of origin and geographical indications. According to this provision, geographical collective marks applied for, registered, or established by use if that possibility is provided for by the legislation concerned, in good faith within the territory of the Union, before the date of filing an application for protection of a corresponding appellation of origin with the Commission, may continue to be used even if a corresponding appellation of origin or geographical indication is registered at a later date and the use of the mark conflicts with the protection of these appellations of origin or geographical indications pursuant to Art. 13 (1) of Regulation 1151/2012. In such cases, the use of the protected designation of origin or protected geographical indication shall be permitted as well as use of the relevant trademarks.
The protection of geographical collective marks therefore exists independently of the protection of geographical indications and designations of origin under Regulation 1151/2012.
