In the USA, the candy bar “Butterfinger” is a big seller – can the term “Butterfinger” still be protected as a trademark for chocolate in Germany? The Munich Regional Court ruled on the plaintiff Ferrero’s accusation of bad faith trademark application.
In this case about the candy bar “Butterfinger”, the well-known confectionery manufacturer Ferrero sued a beverage producer from Germany, which had protected the words “Butterfinger” and “Baby Ruth” as a trademark for chocolate in Germany.
Ferrero sued against German trademark registration of “Butterfinger”
However, as the candy bar “Butterfinger” and “Baby Ruth” have an outstanding reputation in the USA (until 2018 they were distributed there by Nestlé, which had sold parts of its US confectionery business to Ferrero in 2018), Ferrero sued against the German trademark registration. The confectionery manufacturer demanded the cancellation of the trademarks “Butterfinger” and “Baby Ruth” due to revocation and for filing a trademark application in bad faith. According to Ferrero, the German trademark applicant from Brühl had only applied for protection of these trademarks in order to be able to sell these trademark rights as profitably as possible – for example to Ferrero.
In addition, Ferrero also objected to the marketing of a candy bar under the sign “Butterfinger” of the German trademark proprietor, because it had an almost identical packaging design to the design of the candy bar been offered by Nestlé in the USA.
The defendant German trademark owner (i.e. the Übermorgen Getränke-Trendprodukte Vertriebsgesellschaft m.b.H, Brühl, Germany) rejected the accusations. They had not applied for the trademarks with the intention of obstructing use, but had shown its own intention to use them, therefore the requirements of an abusive trade mark application were not met. To prove this intention to use, the defendant submitted its own candy bar Butterfinger, which in fact looked very similar in design to its well-known USA counterpart.
LG Munich: not abuse per se, but…
The Munich Regional Court, which had to decide on this case, partially upheld both parties. The LG Munich rejected a revocation of the trade mark registrations as demanded by Ferrero. The court ruled that the defendant had sufficiently proven that the challenged designation “Butterfinger” had been used in a way that seriously preserved the rights, at least for chocolate products.
Nor was there any application for a trademark in bad faith, the LG München ruled. The court reasoned that Nestlé had itself held trademark rights to the disputed signs in Germany in the past, but had not made use of them since the end of 2010 at the latest.
However, Ferrero was successful before the Munich Regional Court with its demand to prohibit the distribution of a candy bar “Butterfinger” in a presentation comparable to the US “original”. The Munich Regional Court considered the distribution of a “Butterfinger” candy bar in a presentation almost identical to the US original to be unfair imitation.
The press release issued by the court on this case was headed “The registration of trademarks for candy bars that are known abroad is not per se an abuse of rights”. However, the reasoning of the judgement also shows that a similar sales design of a trademark known abroad may not be imitated.
Moreover, this judgement is not final yet – this case will probably continue before German courts.
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German Press release, Az 33 O 12734/19
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