Confectionery Industry Special - SKW Schwarz

Annual Review 2017

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: Intellectual Property / Competition Law

IT & Digital Business

“Sweet marks” – current case law on German and

Field report on GDPR implementation projects

European Level

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

Margret Knitter, LL.M. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 Use of Confectionery Trademarks in a way as to preserve

Commercial and Distribution Law

Trademark Right – Limits for Use in a Modified Form

Cross-border sales contracts:

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

Don’t forget the choice of law rules! Oliver Korte . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33

Registrability of Slogans Christina Bauer, LL.M. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18

Employment Law

Out of sight out of mind?

The new Pay Transparency Act

An obligation to recall products may also exist

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

in the case of injunctive relief claims Dr. Sascha Pres . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20

Tax Law

Pitfalls in food labeling

The end of using license boxes is near!

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

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

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

Confectionery Industry Special Annual Review 2017 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

Intellectual Property / Competition Law The EUIPO also qualified the term BIO?LOGISCH! as a purely

Margret Knitter, LL.M.

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

promotional, laudatory statement, which highlights in particular one characteristic of the goods, the fact that it is composed of biologically cultivated ingredients. The lack of spaces did not help the mark to become registrable.6

1. Judgments on registrability

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

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

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

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

be understood as an expression from the computer industry played

urehead for the company, like a gingerbread heart hanging around

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

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

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

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

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

character to be able to overcome the hurdle of registrability?

were offered with wafers.7

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

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

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

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

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

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

marked goods and services.

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

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

als, cereal bars, and similar products.8 1.1 Distinctive character of word marks

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

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

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

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

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

Oma , Bester Opa , Beste Mama , Bester Papa and even

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

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

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

1

2

3

4

Mom, Best Dad, Best Friend) were denied the distinctive character for confectionery, among other things. The consumer would under-

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

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

consumers were said to connect the word TRUE with ready meals

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

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

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

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

mark applied for did not contain any elements beyond an obviously

vides consumers a promotional statement that is intended to convey

advertised and laudatory meaning that are so striking to allow the

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

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

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

1 2 3 4 5

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.

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

2


Intellectual Property / Competition Law Lidl’s FRUIT & BERRY tea trademark is not distinctive, either, be-

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

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

and are in the shape of hearts.

that the market is overflowing with tea products with a fruit or berry The term CRUNCHY is also understood by average German con-

flavor.11

sumers to mean “crispy, crunchy”, according to the Trademark With regard to the Intersnack application #CHIPS for goods

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

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

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

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

confectionery, cookies, chocolate bars, waffles.”17

tags” (“#”) serve the purpose of emphasizing terms, in particular in electronic texts. In connection with the descriptive term, it was

In the decision by the EUIPO on the word mark ROCKSLIDE

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

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

descriptive term.

nificant portion of the relevant audience understood the colloquial term “ROCKSLIDE BROWNIE” as a description of a certain kind of

The word combination KESSEL CHIPS (kettle chips) was also

brownie. The registration was therefore rejected.18

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

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

metal container.

a ball-shaped boiled sausage, is not descriptive of the goods in question, i.e., milk, milk products, and ice cream powder and there-

Registration of the word combination BÄCKERGLÜCK (baker’s

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

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

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

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

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

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

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

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

no misleading. The registration was therefore granted trademark

fectionery in some way make people happy, for example because

protection.19

14

of their particular quality. Lindt did not succeed in having the The Trademark Office also rejected BAYERNHERZ (Bavarian

mark EXCELLENCE protected as a

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

word mark for chocolate. After the EU

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

Trademark Office did not recognize any

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

distinctive character (the mark only de-

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

scribed the excellent quality/excellence

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

of the chocolate), Lindt attempted to

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

prove that the mark had acquired dis-

purely descriptive nature.

tinctive character through use. This is

15

difficult and expensive, in particular for The Federal Patent Court rejected the application for KNUSPERHERZEN (crispy hearts)

the EU. This is because it has to be

because it was descriptive. The mark

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

allegedly consisted exclusively of information that describes the

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

11 12 13 14 15 16

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.

16

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

3


Intellectual Property / Competition Law 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

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

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

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

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

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

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

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

cluded that consumers perceive it as a trademark.20

tended to be reminiscent of the color of butter cookies and therefore rather underlined the statement made by the word element rather

1.2 Distinctive character of word and figurative marks

than deviating from it. The two red braid patterns look like known borders. Overall, the perception of the public addressed would be

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

determined by the descriptive statement of the word element “DER

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

BUTTERKEKS.” The mark applied for was therefore excluded from

scriptive word component not being able to help them achieve

registration.

registrability. In particular graphic additions that are usual in the industry (e.g., special upper case/lower case, exclamation mark,

According to the EUIPO, when consum-

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

ers see “my CHIPSBOX,”23 they auto-

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

matically think of their own box of chips.

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

This means that the mark gives the im-

sidered to be distinctive. In detail:

pression that the goods and services that are the subject matter of the proceedings

It is understandable that the word combi-

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

nation “Simply good” is purely descriptive

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

for food products of all kinds. The slogan

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

only states that the goods in question are

CHIPSBOX.”

simply good, i.e., they have a good flavor and freshness. The EUIPO is also of the opinion that the graphic

The graphic representation of the word

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

sequence “Mein Menü” (my menu) is no

simple and would be perceived by the relevant public as purely

more than just a normal commercial de-

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

sign medium for goods in classes 29 and

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

30.24 The graphic of the mark, which is

friendliness.21

limited to a representation of the word sequence “Mein Menü” in chalk on a board with a frame, is not grounds for distinctive character.

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.

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.

4


Intellectual Property / Competition Law With regard to “BELGIAN TRADITIONAL

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

BISCUITS,” too, the Board of Appeal of

following decisions. A trademark that shows the external appear-

the EUIPO reached the conclusion that

ance of a product or its packaging must deviate significantly from

the graphic elements and the simple de-

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

scriptive words were not distinctive.

of the product and consequently be able to display the necessary

The mark was considered to consist of a

distinctive character.

25

combination of words in general use and graphic elements that further underpin

The attempt by August Storck to protect

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

Knoppers packaging as a trademark throughout the EU failed after 13 years of

The word mark/figurative mark “WE

proceedings. In principle, the packaging

FRUIT. From Field to Cup” was also

is suitable to identify the origin of the

The

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

public addressed would understand this

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

as purely an advertising slogan. The

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

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

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

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

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

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

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

which was developed by English coffee suppliers and has been

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

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

packaging is protected as a national trademark.28

classified as not being registrable.

26

guage, corresponding slogans are often also used for groceries (such as: “Fresh from the field to the table”).

Bahlsen

failed to manage to bag a

trademark for its yellow and red packag1.3 Distinctive character of marks consisting of a shape

ing for cookies.29 The Board of Appeal of the EUIPO repeated that consumers in

Companies repeatedly try to register their product designs as 3D

principle do not consider packaging with-

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

out graphic or word elements as a trade-

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

mark. It said that neither the shape nor

character of marks that consist of the appearance of the goods

the colored design of the packaging

themselves or their packaging are no different or stricter than those

made it distinctive. Rather, it is an ex-

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

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

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

natural color for the packaging of food products such as cookies

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

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

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

product inside the packaging and is therefore purely descriptive.

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.

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, DE 29 EUIPO Board of Appeal, Decision dated 04/06/2017, R 1740/2016-4 – PRESENTATION OF PACKAGING (Bahlsen).

5


Intellectual Property / Competition Law What you see affects what you buy. It is

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

not just the content that makes a con-

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

sumer decide on a product, but also the

advertising costs for eight countries, as well as trading activities

packaging. The mark applied for with re-

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

gard to a flavoring is a container in the

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

shape of an amphora, which deviates

idence about advertising measures; mentions in trade journals. The

from a normal amphora shape because

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

of the bulge, which is more defined than

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

usual.

This deviation, however, was

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

stated to be for technical and functional

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

reasons because it serves the purpose of

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

positioning the container in a holder. The public addressed would

Easter bunny was considered only slight in comparison with the

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

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

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

Board came to the conclusion that the evidence submitted related

unsuccessful.

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

30

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 trademark 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 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 determined that the mark was not distinctive because it was a typical

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

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

Conclusion If you want to prove distinctive character, the recommendation is to choose a narrow list of goods, limited to concrete goods.

Lindt allegedly also did not make any submission on why the situation should have changed in comparison with when it made its application 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).

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

6


Intellectual Property / Competition Law In October 2017, the Federal Court of Justice issued four land-

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

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

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

Justice set aside Federal Patent Court decisions that had ordered

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

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

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

late packaging and Dextro Energy glucose.

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

33

would also be looking for in competitor’s goods. The Federal Patent Court stated as clarification that as a result such goods or packaging 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 insignificant design elements were not sufficient as grounds for the design to be registered as a trademark.

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 successfully 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.

ZERTUS, Dextro Energy’s parent company, had two 3D marks registered for the form of its glucose tablets in 2003. The appropriate

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

trademark protection was also granted on the basis of acquired

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

distinctive character. When a competitor filed for cancellation of the

the shape consists exclusively of features that are necessary for

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

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

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

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

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

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

rounded corners facilitated consumption, and the centered recess

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

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

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.

7


Intellectual Property / Competition Law 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.

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 consumer could believe that the products in question originate from the same company, or, if applicable from companies that are economically connected. In this case the understanding of an average, rea-

Decisions by the Federal Court of Justice Following the trademark owners’ appeals, the Federal Court of

sonably well-informed and reasonably observant and circumspect consumer is used as a basis.

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 determined 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 competitors. The Federal Court of Justice does not consider the square shape of chocolate bars to be an essential characteristic of chocolate. 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 consumption. 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.

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 characteristic 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 include, 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 character. 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 birthday 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 likelihood 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.

8


Intellectual Property / Competition Law 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 companies that have an economic connection with each other.

There is likelihood of confusion between the registered word and figurative marks “TENTAZIONE FREDDO FREDDO” and “freggo.”40 The ECJ based this decision on the understanding of Spanish and French consumers. For these consumers, the Italian term

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 Alpenschmaus.39 Weetabix is the owner of the ALPEN trademark and filed an objection to the figurative mark “Alpenschmaus,” 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 products). 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.

“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 recognized 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!.

9


Intellectual Property / Competition Law 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 noticeable here because it is at the end of the mark and the public would

Intersnack proceeded successfully against the trademark applica-

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

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

out any distinguishing nature. The relevant public will presume that

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

McDonald’s has extended its range to include products intended

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

particularly for nutrition during sporting activities. This is even more

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

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

word printed on it.

for years now toward healthy food, in particular food products that are low in fat.

Although the Board of Appeal of the EU Trademark Office only granted a slight distinctive character to the “Náttúra” mark, it affirmed that there was likelihood of confusion with “Natura.”45 Visually, it was considered that there were only slight differences that 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 sequences “MAÎTRE CHOCOLATIER” and “MEISTER SCHOKOLADE” 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.

were noticeable. The additional “t” in “Náttúra” also makes no difference because “Náttúra” and “Natura” are pronounced in the same way. The figurative mark “Happy” was intended 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 consumers 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 sufficient to rule out likelihood of confusion.

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.

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.).

10


Intellectual Property / Competition Law

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”

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

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

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

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

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

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

component has a low distinctive character. Just the correspon-

lihood of confusion between the marks.

dence of the component “SUN” could therefore not lead to likelihood of confusion. The other design elements, like the image of

2.3 Conflicts in product packaging or designs

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 opposition based on its word mark “Dracula.” Likelihood of confusion was affirmed, whereby the likelihood of confusion was assessed in relation to a Spanish consumer. This is because the word “Drac-

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

ula” was most prominent on the packag-

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

ing.

In

particular,

the

terms

were

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

conceptual identical because both marks relate to the term vam-

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

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

forms give the same overall impression. The Intersnack design

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

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).

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).

11


Intellectual Property / Competition Law The GC confirmed this decision, overall, the rounded edges and the different label with “MIK MAKI” on it were not considered a distinctive feature.52

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 confusion between the registered EU design for a container for similar candy of the Polish confectionery manufacturer BMB and the Tic

Margret Knitter, LL.M. [email protected]

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.

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

12


Intellectual Property / Competition Law Georg Delhaes

Use of Confectionery Trademarks in a way as to preserve Trademark 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 purposes: 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 thirdparty applications can only be contradicted if the trademark has

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 involve 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

been used seriously within the last five years before the asserting

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

of the claim.

mark still recognize its overall impression despite the differences in

1

details and taking into account its use customary in trade depends

Use in the Registered Form

very much on the individual case.5 Significance and distinctiveness of the trademark are of considerable importance.6 The benchmark

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

is the averagely informed, appropriately attentive, and reasonable

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

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

Modifications that change its significant character or its distinctive-

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

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

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

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

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

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 Convention 2 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

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) – BioMix 5 BGH GRUR 2013, 840 para. 20 – PROTI II; BGH GRUR 2014, 662 para. 17 (18) – Probiotik 6 BPatG GRUR 1995, 588, (589) – Jeannette/Annete; Hildebrandt, trademarks and other identifications, 4th edition, Section 8 paras. 37 et seqq. with additional citations 7 Cf. BGH GRUR 2013, 725 margin note 31 – Duff Beer; BGH GRUR 2015, 587 para. 21 – PINAR 8 Ingerl/Rohnke, MarkenG, Section 26, para. 138; BGH GRUR 2010, 270 para. 18 – ATOZ III

13


Intellectual Property / Competition Law a) According to the case law, the significant character

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

of the registered mark is regularly maintained in the

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

following cases:

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

– Deviations in upper/lower case lettering:9

“PROTI” =

“Goldquell” = “GoldQuell” – Use of words registered in the plural in the singular:10 “Goldbär” = “GOLDBÄREN” (“Gold bear” = “GOLD BEARS”)

“PROTI” =

– Splitting of one word into two words:11

– Language modernizations, such as a change in the German spelling of tea from “Thee” to “Tee”, provided the motif of a fig-

“Kornkammer” =

urative mark is retained or graphic design elements are the focus.15 – Change in the spelling or concept of a word mark, or the address of the trademark holder included in it.16

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

“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– Removal or addition of an individual letter, that is not associated with any change in the phonetics or meaning of the trademark:13

cisely to a special spelling:17

“Jeanette” = “Jeannette”

“Thermorol” = “Thermoroll”

“Lisat” = “Ysat”

“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”

9 10 11 12 13

BPatG, GRUR 2008, 77 (78) Cologne Higher Regional Court 04/11/2014, Case 6 U 230/12, para. 87 – Goldbär BGH GRUR 2000, 1038 (1039) – Kornkammer BGH GRUR 1999, 164, 165 – JOHN LOBB BPatG GRUR 1995, 588; BGH GRUR 2009, 888 para. 16; BPatG GRUR 2005, 592 (593)

14 15 16 17 18

BGH GRUR 2013, 840 para 25 (31 et seqq.) – PROTI II BGH GRUR 1989, 510 (512) – Teekanne II CFI MarkenR 2016, 179 paras. 53 et seqq. – IDRIVE/iDrive BPatG GRUR 1998, 64 (65) 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

14


Intellectual Property / Competition Law – Removal of an accent:19

– In case of figurative and word/figurative marks, the addition or removal of graphic elements that are purely decorative and that

“Castello” = “Castelló”

are perceived as independent elements to which the public attributes no significance with regard to identification.22 23 24

– 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 genitive “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

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

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

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

=

19 CFI T-549/14 dated 10/04/2016 paras. 49 et seq. – Castello 20 BGH BeckRS 2015, 08906, paras. 12 et seqq. – Power-Horse; BGH GRUR 1999, 167 (168) – Karolus-Magnus 21 BGH GRUR 2003, 1047 (1048) – Kellogg’s/Kelly’s; str. cf. Ingerl/Rohnke MarkenG Section 26 para. 151

22 23 24 25

BGH GRUR 2013, 725 para. 19 – Duff Beer CFI T-381/12 dated 03/12/2014 paras. 37 et seqq. – PALMA MULATA CFI T-543/12 dated 10/24/2014 paras. 81 et seqq. – Grau Ferrer CFI T-146/15 dated 09/13/2016 paras. 42 et seqq. – hyphen; ECJ C-587/16 P 02/28/2017 para. 4 – Skylotec 26 BPatG GRUR 2003, 530 (532) – Waldschlösschen

15


Intellectual Property / Competition Law – Change in or addition of a quality reference or quality seal that

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

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

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

ed”).27

two-dimensional figurative mark for a three-dimensional design may preserve the same right if the change in dimension does not

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

alter the overall impression of the mark.35

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

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

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

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

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

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

result in a significant negative effect on the originally registered

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

mark.29

removal or addition of text to or from a 3D mark can alter its significant character.36

– Changes to the owner stated in the mark, however, are damaging 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 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 before the introduction of mandatory use (in 1967) and used

– 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

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 irreparable damages to the owner.37

color tone may alter the overall impression. In case of multicolored marks, in addition the relationship between individual colors must remain unchanged.33

27 28 29 30

BPatG GRUR 1997, 836 (837) – Apfelbauer BPatG Mitt 1988, page 78 – Rice Krispies Art. 54(2) EU Trademark Directive OLG Munich, judgment dated 11/19/2002, file ref. no 29 U 2590/02 – Christkindl-Glühwein 31 BGH BeckRS 2006, 00423 paras. 14, 16 – Mars 32 Cf. BGH GRUR 2006, 859 (863) margin note 34 – Malteserkreuz; BGH GRUR 1963, 423 (425) – coffeinfrei 33 Cf. ECJ GRUR 2004, 858 margin note 33f. (42) – Heidelberger Bauchemie

34 Cf. Ingerl/Rohnke, MarkenG, Section 26 Margin note 191; differentiated Ströbele/ Hacker/Ströbele margin note 126 35 BGH GRUR 1998, 934 (936) – Wunderbaum 36 Cf. Ingerl/Rohnke, MarkenG, Section 26 margin note 192 37 BPatGE 25, 45, 47 – Rocky; BGH GRUR 1975, 135, 137 – KIM-Mohr

16


Intellectual Property / Competition Law d) With regard to questions of use preserving trademark

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

rights, it is irrelevant in the end whether the modernized

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

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

dependent on the individual case, caution is recommended when

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

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

mark if he has arranged for independent protection of the

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

updated trademark design by filing application for a new

mark.

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. Georg Delhaes [email protected]

38 Section 26 Para. 3 (2) MarkenG 39 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

17


Intellectual Property / Competition Law 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 advertising 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 example, the sign “chocolate” is not eligible to distinguish the chocolate 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 registration 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.

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 indication 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 advertising 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 necessary, but useful for trademark protection is a sign with several meanings, a play of words or a sign that is perceived as imaginative, surprising and unexpected and thus memorable.5 In addition, 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 merchandising 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 relevant public. However, one can take a different view in that case. Therefore, the approach of the courts is not quite clear with regard 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.

18


Intellectual Property / Competition Law Precisely because protectability is often unclear, companies should also register the slogans they use as a trademark. Otherwise 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. [email protected]

19


Intellectual Property / Competition Law Dr. Sascha Pres

2. The view of the Federal Court of Justice

Out of sight out of mind?

In the aforementioned decisions, the Federal Court of Justice has recently repeatedly used the option of providing practitioners with

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

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

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

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

the direction for companies and individuals under cease and desist

product with a particular presentation or to advertise a product

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

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

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

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

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

no longer be sold by its customers.”

1

injunctive relief claims will have to get used to recalling products if they have undertaken to cease and desist from acting in a certain

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

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

is usually no basis for requesting the return of goods in supply relationships due to a lack of contractual recall options for the party

1. Starting position

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

The legal requirements on the sale and advertising of foodstuffs

influence on third parties whose actions benefit him financially if he

are highly complex, and there are numerous pitfalls for potential

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

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

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

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

jurisdiction, the Federal Court of Justice demands that the party

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

liable for injunctive relief should “take all possible and reasonable

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

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

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

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

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

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

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

remaining products.”

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

this context, the legal infringements are typically directly linked to product features (e.g., infringements of third-party IP rights, labeling violations, infringements of the Health Claims Regulation) or the product itself contains unauthorized additives. If third parties required 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

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

20


Intellectual Property / Competition Law 3. Practical tip

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

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

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

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

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

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

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

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

is difficult to measure, could easily be quantified.

Code of Civil Procedure provides the relevant debtors with a claim

manship of Division I of the Federal Court of Justice, has doubtlessly 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 violation exceeding the trivial limit. There is also a clear downside of these decisions for creditors, however. It is well known that disputes under IP law and unfair competition 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 [email protected]

21


Intellectual Property / Competition Law 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 replaces 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 legibility (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 December 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-

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 anticompetitive 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 Regulation, but also operators who, on the basis of the information in their possession as professionals, “know or presume to be” non-compliant with the applicable food information law and requirements of relevant national provisions. In case of doubt, it is therefore sufficient 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

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, advertising 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

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

demonstrated by generally accepted scientific evidence.

line judgment and after submission to the CJEU on product labeling of a fruit tea by producer Teekanne.1 The dominant element of the

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

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

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

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

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

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

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

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.

22


Intellectual Property / Competition Law look like a seal of quality. In fact, this tea did not contain any com-

apple juice concentrate, fructose syrup, 1.3% elderberry juice from

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

elderberry juice concentrate, and only 0.1% raspberry juice from

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

raspberry juice concentrate, and 0.1% rhubarb juice from rhubarb

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

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

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

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

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

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

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

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

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

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

The Food Information Regulation expressly provides that informa-

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

tion about food products is considered misleading if by means of

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

the appearance, the description or pictorial representations, the

to avoid the possibility of consumers being misled.3

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 particular 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 presentation of the “Himbeer-Vanille-Abenteuer” fruit tea was therefore, despite the correct list of ingredients, misleading product labeling.

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

affirm that strawberries were the main component and therefore

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

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

0.1%. Netto Market-Discount sold the multi-fruit rhubarb drink “Ac-

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

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

not consist exclusively of puréed fruit, but also contain preserving

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

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

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

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

dient list showed that the drink contained mainly apple juice from

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

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

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

23


Intellectual Property / Competition Law “100%*” was not sufficient clarification to remove the risk of con-

According to Celle Higher Regional

sumers being misled.4

Court, the name “Heidekrone” (heather crown) for honey, which was produced

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

from the nectar of heather flowers, is not

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

a violation of the Food Information Regu-

create a misconception, although the syrup contained a significant

lation if the label on the front states that

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

the producer is residing at the edge of

gested to the relevant public from the product presentation that the

Lüneburg Heath, although the honey

syrup consists of ingredients that were obtained from natural elder-

comes from a mixture of honeys from

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

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

centrates do not overpower the taste of elderflower, consumers’

resents a reference to the botanical and not geographical origin of

expectations are not disappointed, according to Frankfurt Higher

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

Regional Court.

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

5

sult, consumers would not presume that the nectar for the heather The designation of a whole milk product as “Weide-Milch” (“pas-

honey originates from heather honey from the geographical region

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

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

cows and the rear side includes the following accurate passage of text: “This product is 100% pasture-grazed milk. Our pas-

The slogan “So wichtig wie das tägliche

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

Glas Milch” (“As important as a daily

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

glass of milk”) was used by the producer

sociation filed a complaint for misleading information because the

of the “Monster Backe” cream cheese

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

fruit dip. The Center for Protection

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

against Unfair Competition considered this misleading because it

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

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

sumers would expect cows to have grazed extensively on pastures

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

prior to milking. Nuremberg Higher Regional Court did not follow

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

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

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

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

portion of calcium as 0.2 l of milk, since four cups of the cream

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

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

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

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

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

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

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

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

clarification on the reverse side. There was therefore no misleading

nutritional value as defined in the Food Information Regulation.

information.6

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

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.

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

24


Intellectual Property / Competition Law products do contain calcium, which contains minerals that promote

of the product was intended to improve physical performance in

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

sports and therefore would not lead to an unwanted increase in

sider this to be misleading information.8

sugar consumption. This argument was not upheld by the ECJ. With regard to the high level of protection of consumers, health

Dextro Energy GmbH & Co. KG wanted

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

to advertise its glucose tablets with

consistent with generally accepted nutrition and health principles.

health-related statements such as “glu-

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

cose supports physical activity,” and

glucose may not be used on its product packaging.

“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-

III. Conclusion

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

Potential deception remains a dominant topic in the interplay be-

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

tween product designs that are intended to attract attention and

pean Commission applied for the rejection of the statements in

encourage consumers to buy by providing information on natural,

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

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

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

the actual content of the products and consumer expectations on

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

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

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

to consumers in jurisdiction, particularly when it comes to images

claims are prohibited if they are inconsistent with generally ac-

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

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

false impression of dominating ingredients in a product is created,

tro Energy was that the health claims were sending a contradictory

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

and confusing signal to consumers because they called for the

ingredients.

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 Regulation (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 contradictory and confusing signal.10 Dextro argued that the glucose contained served exclusively nutritional purposes, which was desired by a targeted consumer group and, in addition, the consumption

Dr. Dorothee Altenburg [email protected]

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.

25


Intellectual Property / Competition Law Dr. Magnus Hirsch and Stephanie Pfaff

Chocolate, milk and honey – News on confectionery labeling Foodstuffs, including confectionery, are subject to strict labeling

The ruling refers not only to pralines, but also to any other kind of confectionery containing chocolate.

2. D esignation of vegetable foodstuffs as dairy products

requirements and must be labeled correctly to ensure that con-

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

sumers are provided with comprehensive and accurate information

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

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

tive additional terms, either.

the past year. Several courts, including the Court of Justice of the European

1. Labeling of chocolate

Union, ruled on this issue last year.

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

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

burg Higher Regional Court1 ruled that the obligation to label cocoa

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

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

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

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

etable products. The CJEU ruled that the term “milk” may not be used for purely vegetable products, since it is a product of animal

The case concerned plum pralines, where the packaging label

origin. Other designations reserved exclusively for milk products

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

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

formation on the percentage of dry cocoa solids in the chocolate

ble products, even where clarifying or descriptive terms referring to

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

the vegetable origin are added. The names reserved exclusively for

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

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

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

ulation 1308/2013.3 They include among others cheese, yogurt,

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

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

it was disputed whether this labeling obligation also applied if one

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

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

fact that these designations may not be used for pure vegetable

product but only as an ingredient in another chocolate product,

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

such as the plum pralines. Hamburg Higher Regional Court arrived

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

at the conclusion that the cocoa and chocolate products set out

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

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

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

tion of the total cocoa solids content allowed conclusions to be

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

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

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

statutory provision is to inform consumers about the proportion of

lihood of confusion with regard to the composition of the products

the characteristic ingredient, the cocoa component, in cocoa and

they want to purchase.

chocolate products. Even if the list of products that are subject to labelling does not include pralines, this does not mean that choco-

Vegetarian or vegan confectionery products in which milk or yogurt

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

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

does not apply to the total content, though.

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

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

2 CJEU, June 14, 2017, C-422/16 3 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

26


Intellectual Property / Competition Law ample, they may not be referred to as “chocolate made from soy

not sufficient to deceive consumers from the region that consumers

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

could believe that the heather honey originated from the geographical region. Rather, the average consumer should be considered and

Another case before Constance Regional

since there are different heathlands in Germany, the consumer would

Court concerned “soy-based spread”

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

for breads, where the term “like cream

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

cheese” was listed on the packaging,

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

with the word “cream cheese” printed in

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

larger

4

Regional

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

Court ruled that the term “cheese” may

and the address are compulsory information in accordance with Arti-

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

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

way if the product is not a dairy product.

term is not suitable to establish an indication of origin.

3. Labeling of honey products

Conclusion

Celle Higher Regional Court5 ruled that the designation “Heide

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

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

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

origin of honey.

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

lettering.

Constance

In addition, high fines may be imposed. Moreover, there is possiIn the case at issue, the plaintiff had objected to a honey being ad-

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

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

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

that the honey originated from the Lüneburg Heath (Lüneburger

careful and expert examination of all labels and advertising mes-

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

sages for foodstuffs, particularly since legislation and case law are

pany headquarters in the Lüneburg Heath. Celle Higher Regional

constantly evolving.

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

Dr. Magnus Hirsch

Stephanie Pfaff

[email protected]

[email protected]

4 Constance Regional Court, June 22, 2017, 7 O 25/16 KfH 5 Celle Higher Regional Court, November 24, 2016, 13 U 130/16

27


Intellectual Property / Competition Law 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 advantage 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

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.

lip-syncing videos. The “KitKat challenge” was initiated by two wellknown 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 uploaded 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 Australia. 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 impressions, and a range of 4 million.

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, Section 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, unless 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 possible.

1 https://www.wuv.de/specials/influencer_marketing/kit_kat_setzt_auf_musically

2 https://de.wikipedia.org/wiki/Influencer 3 Köhler/Bornkamm/Köhler, 35th ed. 2017, UWG [German Act Against Unfair Competition] Section 5a para. 7.23 4 Köhler/Bornkamm/Köhler, 35th ed. 2017, UWG Section 5a para. 7.27

28


Intellectual Property / Competition Law 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 Facebook 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 commercial purpose is clearly visible to the average consumer at first glance.

Practical tip In legal practice, it is therefore advisable to always label advertising posts in social media at the beginning as “Werbung” (“advertising”) 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 carefully 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-

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 advertised 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-

ing requirements are observed, there is a risk that review of the content 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 McWhopper – 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

tion” or “purification” of the body beyond the body’s own function.

5 June 08, 2017 – Case 13 U 53/17 6 September 13, 2017 – Case 23 O 30/17

7 http://www.wiwo.de/unternehmen/dienstleister/mcwhopper-frieden-zwischenburger-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

29


Intellectual Property / Competition Law Legal framework conditions

Recent developments

As the McWhopper example shows, it makes sense to use current

While classical ambush marketing and the assessment of trade-

events as advertising vehicles. Where generic events are used to

mark and advertising law have accompanied us for more than 10

do so, this is no problem. It becomes more difficult, however, if the

years, there has been an interesting development in the sports sec-

events are protected by trademark law or, for example, in sports, if

tor. The Federal Cartel Office is currently examining whether the

they are governed by statutory restrictions under IOC’s Advertising

application of Article 40.3. of the Olympic Charter by the German

Rule 40.

Olympic Sports Confederation constitutes anti-trust conduct that is to be prohibited.11 If antitrust violation were to be affirmed, this

Article 40.3 of the Olympic Charter states: “Except as permitted by

would have a significant impact on the advertising opportunities

the IOC Executive Board, no competitor, team official or other team

and marketing not only of athletes but also companies that are not

personnel who participates in the Olympic Games may allow his

sponsors.

person, name, picture or sports performances to be used for advertising 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

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

In terms of advertising law, problems may also arise if the impres-

is enormous. Apart from this issue, however, it remains a fact that,

sion is created that companies are sponsors of the event. This is

especially in the case of non-sponsors, it must always be reviewed

seen as misleading.

whether there are implications under trademark and competition law.

Dr. Ilja Czernik

Corinna Sobottka

[email protected]

[email protected]

10 http://www.spiegel.de/sport/sonst/bundeskartellamt-verfahren-gegen-dosb-und-ioc-eingeleitet-a-1174722.html

11 http://www.spiegel.de/sport/sonst/bundeskartellamt-verfahren-gegen-dosb-und-ioc-eingeleitet-a-1174722.html

30


IT & Digital Business Dr. Stefan Peintinger, LL.M.

Field report on GDPR implementation projects A new era in data protection will commence on May 25, 2018.

3. P refer 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.

From that date on, the General Data Protection Regulation (GDPR) will apply. Companies of all industries will have to implement the

While these are not new requirements that are being introduced

GDPR. In many German companies, preparations for implementa-

by the GDPR, companies have been rather reluctant to implement

tion are already in full swing. SKW Schwarz advises its clients on

them to date. This is also demonstrated by the fact that some well-

this process. The following points are repeatedly critical:

known software manufacturers do not (yet) provide the appropriate routines in their enterprise solutions.

1. Drawing up a project plan

It takes time to develop an erasure and blocking concept. Work-

While some companies use their project to first perform data

shops may be used to provide assistance. Technical and organi-

protection audits, others are directly starting with their GDPR

zational implementation, which should be as practical as possible,

implementation. Practical experience shows that the expectation of

may take place while other project phases are handled in parallel,

working through projects step after individual step is often disap-

e.g., implementing processes to meet new requirements due to the

pointed. Some tasks need to be coordinated in a time-consuming

rights of data subjects.

manner. Projects will regularly start with the drafting of records regarding processing activities.

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,

2. Records of processing activities

processes in accordance with rights of data subjects should be implemented (Articles 15 – 22 GDPR).

Records of processing activities are the key starting point for example to provide information to the data subject (Art. 13 GDPR) and

If a data subject asserts a right, companies will in general have a

to keep an overview regarding processing activities (Art. 30 GDPR).

period of one month to take the appropriate action (Article 12 (3) sentence 1 GDPR).

It is very helpful if management clearly communicates to its employees that the drafting and maintenance of such records is not

As part of a project, existing processes are also critically scruti-

a matter of occupational therapy. Data protection authorities and

nized. How much effort is required to provide complete information

compliance auditors are generally starting their work with examin-

today (see former Section 34 German Federal Data Protection Act;

ing those records.

until May 25, 2018)? The response is regularly unsatisfactory.

31


IT & Digital Business 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

7. H ow can this all be managed by May 25, 2018? Companies often ask themselves how all of this can be implemented by May 25, 2018. With respect to the rights of data subjects and audit requests by data protection authorities, it is advisable 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 personal data. These opportunities can be identified within an implementation project. The GDPR is not a showstopper for innovative business ideas.

The GDPR makes it easy for data protection authorities. Under Article 5 (2) GDPR, each company concerned is responsible for and must be able to demonstrate GDPR compliance. Relevant documents are to be provided to the data protection authorities, which may inspect them at their discretion. Their first question will regularly 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) [email protected]

32


Commercial and Distribution Law Oliver Korte

Cross-border sales contracts: Don’t forget the choice of law rules!

tion on Contracts for the International Sale of Goods (CISG).” Frequently, 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-

The confectionery industry has a heavy international focus, and in-

vent such situations. It is generally balanced and quite similar to the

creasingly so. In recent years, both exports (sales +5.6% from 2015

purchase law of the German Civil Code. There are key deviations

to 2016) and imports (revenue increase of 5.6% from 2015 to 2016)

in some details, however. As an example, the right to rescind a

of confectionery have grown strongly (source: SG-Directory). Ever

contract is more difficult compared to the right to withdraw from a

more smaller companies in the confectionery sector have business

contract under the German Civil Code. The rescission of a contract

partners abroad.

is only possible in the case of substantial breaches and is usually not possible in the case of defects of the goods. This deterioration

Contract management, however, does not always keep pace

of the buyer’s position is, however, compensated for by claim for

with the increasing internationalization. Companies frequently use

damages, which – unlike under the German Civil Code – may also

outdated contract forms that have not been optimally adapted to

be given irrespective of fault. Frequently, this results in the buyer of

cross-border business transactions.

a defective product not being able to return it, but being entitled to cover transactions with the seller that liquidate the resulting disad-

For example, there are often no clauses that govern which law

vantages. In summary, a good deal should not fall through because

should apply in the relationship between the parties. It is strongly

the parties cannot agree on the applicability of the German Civil

recommended to use clear and unequivocal rules. German com-

Code and the German Commercial Code. The application of the

panies like to refer to German law, which is often useful, as its

CISG as a supranational compromise is a good way out in such

contents are generally known and no unpleasant surprises are to

cases. If the “power status” between the parties allows it, however,

be expected.

it is advisable to make some modifications for one’s own benefit.

But beware: When only the phrase “This contract shall be governed 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 following wording: “This contract shall be governed by and construed in accordance with the laws of Germany, excluding the UN Conven-

Oliver Korte [email protected]

33


Employment Law Thomas Wittmann

The new Pay Transparency Act

entrepreneurial freedom to make a differentiation in the compensation. It is only that this may not be done based on gender, but rather must be based on factual grounds.

The New Pay Transparency Act entered into force on July 6, 2017.

Requirements – When Is a Pay System Free of

The law that is not widely known yet is aimed at equal pay for

Discrimination?

women and men for the same work. In principle, it affects all employers and involves some new obligations. For companies with over 200 employees, it creates direct claims to information for employees. 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

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 women 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.

– 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

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”

With regard to all pay components and pay conditions, discrimi-

monitoring should be performed in accordance with Section 17(1)

nation on the basis of gender for equal or equivalent work is pro-

(1) Pay Transparency Act. The justification for the act recommends

hibited. Agreements that breach this requirement are ineffective in

a period of five years. As a result of the fact that the entire testing

accordance with Section 8(1) Pay Transparency Act. The question

process, however, is voluntary, companies can also perform moni-

is now what equal or equivalent work actually means. In accor-

toring at longer intervals. In any case, based on this legal situation,

dance with Section 4 Pay Transparency Act, this is the case if male

it can hardly be recommended that voluntary testing procedures be

and female employees perform identical or equivalent activities in

performed in accordance with Sections 17, 18 Pay Transparency

different workplaces or successively in the same workplaces. The

Act because the performance may have detrimental consequences

term “equivalent activities” in particular will lead to delimitation

for the employer. If the testing procedure discloses discrimination

problems in practice. According to the justification of the bill, this

based on gender, the employer will be obliged in accordance with

should be based on an overall view of all factors. For example, the

Section 19 Pay Transparency Act, to take suitable measures to rec-

criteria for assessment should include training requirements, prior

tify this. Finally, in any case, the testing procedure will have nega-

knowledge, skills, qualifications, responsibility, as well as physical

tive consequences for the employer. This is because the procedure

and mental burdens. The concrete determination of the equivalent

will either show that there is no discrimination, then the employer

activities must take place based on an objective benchmark, sub-

will still “only” be encumbered with the costs, or if discrimination

jective value of the work performance to the employer does not

is determined, the company will be obliged to inform its employ-

play a role. In any case, the productivity of each employee can be

ees of this in accordance with Section 20(2) Pay Transparency Act.

taken into account and may be grounds for the granting of perfor-

This therefore reveals grounds for complaints that may have sub

mance bonuses. Of course, the employer is free on the basis of its

sequently expired or that would not have been asserted.

34


Employment Law In order to be prepared for individual claims to information, it is,

other hand. The claim to information can be asserted every two

however, recommended that employers should nevertheless per-

years for the first time as of January 6, 2018 and generally every

form an internal inventory for the operational testing procedure and

two years. The employees must submit their request in text form.

to try to determine comparison activities based on objective criteria.

The information will not be provided on data protection grounds if

In any case, the performance of a full testing procedure in accor-

the comparison activity is performed by fewer than six employees

dance with the Pay Transparency Act cannot be recommended. In

of the same gender.

addition, in this way it is possible to monitor whether the requirement for pay discrimination would be breached and any provisions could be ineffective. For the purposes of proof, the relevant criteria

Claim to Pay Adjustment

should be stated in writing, and documented in case of new hires,

If, after the granting of the corresponding information that pay dis-

promotions, or pay rises.

crimination actually exists, the employee can request a pay adjustment, as well as compensation in accordance with Section 15(2)

Obligations to Report on Equal Pay

General Equal Treatment Act. A claim of this kind to pay adjustment was also recognized before the entry into force of the Pay Trans-

Employers with more than 500 employees who are obliged in ac-

parency Act and is derived from Section 2(1)(1)(2) General Equal

cordance with Sections 264 et seqq. and Section 289 Commercial

Treatment Act and Section 8(2) General Equal Treatment Act. In-

Code to issue a management report, are obliged to draft a report

terestingly, exclusion periods for the asserting of the claim can vary

on gender equality and equal pay in accordance with Section 21(1)

in individual contracts or collectively because legislators refrained

Pay Transparency Act. The report must be created every three years

from a paragraph saying the opposite, which was still in the draft

in accordance with Section 22 Pay Transparency Act for employers

of the act. In addition, the standard limitation period with a period

who are bound by tariffs or who apply tariffs. Therefore, companies

of three years will apply in accordance with Sections 195, 199 Civil

who are obliged to issue reports should consider at an early stage,

Code.

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.

4. S implifications for Employers Bound by Tariffs and Who Apply Tariffs

3. Rights and Claims of Employees

The act differentiates between employers who are bound by tariffs (Section 5(4) Pay Transparency Act), and who apply tariffs (Section

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 employers 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-

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, Section 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.

cil in such companies, then the employees must contact it, on the

35


Employment Law 5. Practical Tips It is clear that employers will now incur significant additional bureaucratic and financial expenses. If there is no reporting obligation, a corresponding formal procedure is not recommended in accordance with the Pay Transparency Act because the employer only incurs disadvantages by doing this. In any case, it may nevertheless be sensible to perform in-depth documentation of the current situation in order to be prepared for the employees’ claims to information 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

Thomas Wittmann [email protected]

contracts or collective agreements can also be considered in order to guarantee legal certainty.

36


Tax Law Heiko Wunderlich and Margret Knitter, LL.M.

in Germany as of next year if those payments are tax-free or sub-

The end of using license boxes is near!

ject to a very low tax rate at the beneficiary abroad. The bill states:

By introducing a license barrier from January 1, 2018, multinational

on an action plan in line with the OECD approach against harmful

companies are to be prevented from using “license boxes” or “patent

tax competition among 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

box companies” outside Germany. In the past, those foreign license boxes or patent boxes were regularly used to reduce the tax burden

The only exception to the limitations on tax deductions will be al-

on profits generated from the exploitation of patents, licenses, con-

lowed by the “nexus” approach: Accordingly, the use of license or

cessions, and trademark rights (particularly by companies in Malta,

patent boxes continues to be permitted where the company ben-

The Netherlands, Belgium, and Switzerland). The German compa-

efitting from tax incentives is actively engaged in developing the

nies then pay royalties to the foreign patent box company for granting

relevant IP. This does not apply, for example, where the right has

the rights held abroad, which are deducted as operating expenses

been acquired, developed by related entities, or obtained by the

in Germany, creating a tax advantage over the years. The licensing

granting of trademark rights.

barrier is intended to prevent this tax structuring option in the future. Companies should therefore seek comprehensive advice on tax According to the bill, intra-group expenses for patents, licenses,

implications and options, preferably before the legislation enters

concessions, and trademark rights will no longer be tax-deductible

into force.

Heiko Wunderlich

Margret Knitter, LL.M.

[email protected]

[email protected]

37


Practice Group Industrial Property / Competition Law

Practice Group Employment Law

Dr. Dorothee Altenburg1 Christina Bauer, LL.M. Jens Borchardt, LL.M.2, 7 Dr. Markus Brock1 Dr. Ilja Czernik1, 7 Georg Delhaes Markus 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 Heyde Dr. Ulrich Hildebrandt Dr. Magnus Hirsch1

Christian von Bitter8 Bettina-Axenia Bugus Boris Christian8, 17 Tabea Frühinsfeld8 Dr. Martin Greßlin8 Dr. Bernd Joch8

Hanna Karl8 Dr. Martin Römermann8 Katharina Rosbund8 Andreas Seidel Michael Wahl8 Thomas Wittmann

1 Specialist Lawyer for IP Law 2 Specialist Lawyer for IT Law 3 also Solicitor in England and Wales 4 Specialist Lawyer for Banking Law and Capital Market Law 5 Specialist Lawyer for Commercial Law and Corporate Law 6 Rechtsanwalt and Civil Law Notary 7 Specialist Lawyer for Copyright and Media Law 8 Specialist Lawyer for Employment Law 9 Specialist Lawyer for Tax Law

10 Specialist Lawyer for Family Law 11 Rechtsanwalt and Tax Consultant 12 Data Protection Auditor (TÜV) 13 Certified Expert in Public Procurement Law 14 C ertified Information Privacy Professional (CIPP/E, CIPM, GDDcert.) 15 C ertified Expert in International Business Law 16 Appointed Public Accountant 17 Rechtsanwalt and Mediator

Margret Knitter, LL.M.1 Stefan Kridlo6 Madeleine Metzner Dr. Stefanie Nabrotzki, LL.M. Sebastian Osterrieth Dr. Andreas Peschel-Mehner Stephanie Pfaff Dr. Sascha Pres2, 7 Sandra Sophia Redeker Yvonne Schäfer1 Stefan C. Schicker, LL.M.1, 2, 3 Dr. Konstantin Wegner, LL.M.

Practice Group IT & Digital Business Nikolaus Bertermann2, 12 Ivan Brankov Dr. Markus Brock1 Dr. Oliver M. Bühr2, 6 Kirill Engelmann Florian Hensel7 Dr. Johann Heyde Dr. Oliver Hornung Insa Janßen, LL.M. Dr. Wulf Kamlah René M. Kieselmann13 Franziska Ladiges, LL.B. Moritz Mehner Dr. Daniel Meßmer Elisabeth Noltenius, LL.M. Dr. Matthias Nordmann, M.A.5

Dr. Matthias Orthwein, LL.M. Dr. Stefan Peintinger, LL.M. Dr. Andreas Peschel-Mehner Sven Preiss, LL.M.7 Yvonne Schäfer1 Johannes Schäufele Stefan C. Schicker, LL.M.1, 2, 3 Jan Schneider2 Martin Schweinoch2 Corinna Sobottka Benjamin Spies Philipp Thomé Karolin Widmann Julian Westpfahl2 Dr. Volker Wodianka, LL.M.14 Dr. Hans Markus Wulf2

Legal Notice SKW Schwarz Rechtsanwälte Steuerberater Wirtschaftsprüfer Partnerschaft mbB Munich Local Court PR 884 Editorial Department: Margret Knitter, LL.M. Email: [email protected]

Practice Group Media and Entertainment Law Dr. Dorothee Altenburg1 Dr. Andreas Bareiss Jens Borchardt, LL.M.2, 7 Bettina-Axenia Bugus Dr. Ilja Czernik1, 7 Dr. Martin Diesbach Dr. 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 Heyde Dr. 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-Mehner Sven Preiss, LL.M.7 Dr. Zahra Rahvar Dr. Ulrich Reber15 Johannes Schäufele Prof. Dr. Mathias Schwarz16, 17 Corinna Sobottka Pia Sökeland Wenzel Steinmetz Georg Wallraf Dr. Konstantin Wegner, LL.M.

Offices D-10719 Berlin Kranzler Eck/Kurfürstendamm 21 T +49 (0)30 8 89 26 50 - 0 F +49 (0)30 8 89 26 50 - 10

D-60598 Frankfurt/Main Mörfelder Landstraße 117 T +49 (0)69 63 00 01 - 0 F +49 (0)69 63 55 22

D-40212 Düsseldorf Steinstraße 1/Kö T +49 (0)221 82 89 59 - 0 F +49 (0)221 82 89 59 - 60

D-80333 Munich Wittelsbacherplatz 1 T +49 (0)89 2 86 40 - 0 F +49 (0)89 2 80 94 - 32

D-20095 Hamburg Ferdinandstraße 3 T +49 (0)40 33 40 1 - 0 F +49 (0)40 33 40 1 - 530

Practice Group Commercial and Distribution Law Marion Anzinger Dr. Philipp Asbach Boris Christian8, 17 Dr. Ilja Czernik1, 7 Georg Delhaes Dr. Philipp Heigl, LL.M. Dr. Bernd Joch8 Klaus Kelwing5 Oliver Korte5

Christine Lingenfelser, LL.M. Caroline Lorenz Dr. Ulrich Muth4 Dr. Kolja Petrovicki, LL.M. Sven Pohl Dr. Jürgen Sparr, LL.M. Dr. Sebastian Graf von Wallwitz, LL.M.5

Practice Group Tax Law Dr. Christian Becker9 Christoph Meyer9, 10 Sven Pohl

Dr. Gerd Seeliger11, 17 Nicole Thomann9 Heiko Wunderlich9

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 professional 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

38