Upload
others
View
6
Download
0
Embed Size (px)
Citation preview
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 1/35
Annual Review 2014 2014
Overview of Topics
Trademark Law
– "Sweet marks” – Current case law at German
and European Level
2
– Effective protection against imitations at the
Confectionery Trade Fair
12
– Descriptive marks: Design instead of trade-
mark?
14
Competition Law
– Negative product assessments and possible
legal defense
16
IT & Digital Business
– New consumer law for online trading – What is
really new? What are the new disclosure obliga-
tions? How has the right of cancelation
changed?
19
Media and Entertainment Law
– Guideline on product placement
23
Customs Law
– Formulations – A bitter customs aftertaste?
26
– New information on the capping of taxes on
electricity and energy – Secure your refund
claim!
27
Commercial and Distribution Law
– In the case of activities in foreign countries: Be
cautious about the agreement on legal venue or
arbitration!
28
Antitrust Law
The German Federal Cartel Office intensifies
its investigation activities
29
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 2/35
Annual Review 2014 2014
TRADEMARK LAW
"Sweet marks” – Current case law at German and
European Level
1. Judgments on registrability
All brand manufacturers know how difficult it can be to
convince the trademark offices of the registrability of
certain words, slogans, or other presentations. Even very
easily memorable marks are often rejected by the offices
with the argument of a lack of distinctiveness. That
means that the mark only provides a description of the
product, but no reference to the company behind it,
which is a prerequisite for trademark protection. The
following judgments give a good overview of what is
considered suitable for registration as a trademark.
1.1 Distinctive character of word marks
The Board of Appeal of the EU Trade Mark Office (Office
for Harmonization in the Internal Market) rejected the
trademark application for "GREEN BEANS“.1 The term
allegedly reflected only one of the main components in
the registered drinks, namely coffee, and was therefore
not recognized as a mark.
The mark "CULINARTE”, on the other hand, was granted
a minimum level of distinctiveness.2 It was claimed that
the term came from the Romanian words "Culinar“ and
"Arte” and it is therefore descriptive and suggestive.
According to regular Romanian syntax, however, the
phrase should have been "Arta Culinara“ or "Arte Culi-
nare” because the adjective normally precedes the noun.
1 OHIM-BoA, 02.12.2013, R-1530/2013-1 – GREEN BEANS 2 OHIM-BoA, 13.12.2013, R 1543/2013-5 – CULINARTE
The German Federal Patent Court rejected the applica-
tion for trademark protection for "Chocolatino" because it
was stated that the name was based on the Italian
spelling “ciocolatino”, which means "small chocolate" or
"praline".3
The application for "Richard Wagner balls" was also
unable to rely on any commercial reference to origin. The
trademark was simply a reference to a product that was
offered in connection with an event relating to the famous
composer.4 On the same grounds, the applications for
"Gustav Mahler Röschen” (Gustav Mahler Rosebuds)
and "Gustav Mahler Röslein” (Gustav Mahler Flowers)
were rejected.56
The German Federal Patent Court considered the term
"Bachblüten“ (Bach flowers) as being simply the usual
term for different plants defined by Dr. Edward Bach,
which are used in Bach flower therapy and refer to the
underlying formulation.7 Trademark protection was there-
fore not granted.
The mark "GerstenWonne“ (Barley Bliss) was also re-
jected because the term referred only to a laudatory
reference to the product that could be made all from the
cereal "barley" and from which the consumer receives
culinary pleasure.8
The German Federal Patent Court ordered the deletion
of the recently registered trademark "SPIRIT” on the
grounds that the term has to be interpreted as factual
3 Federal Patent Court, 03.03.2014, 25 W (pat) 527/12 – Chocolatino
4 Federal Patent Court, 03.02.2014, 25 W (pat) 560/12 – Richard Wagner – Barren (appeal was admitted) 5 Federal Patent Court, 31.01.2014, 25 W (pat) 564/12 – Gustav Mahler Röschen 6 Federal Patent Court, 31.01.2014, 25 W (pat) 564/12 – Gustav Mahler Röslein 7 Federal Patent Court, 20.01.2014, 25 W (pat) 587/12 – Bachblüten 8 Federal Patent Court, 07.10.2013, 25 W (pat) 515/12 – GerstenWonne
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 3/35
Annual Review 2014 2014
information with regard to the determination or effect of
the product "tea".9
1.2 Distinctive character of word and figurative
marks
If a word mark alone is not granted the necessary distinc-
tiveness, it can help if a graphic design is added to the
mark. Caution is required, however. The figurative com-
ponents must not only represent the content of the mark
or have a purely decorative effect.
The OHIM Board of Appeal there-
fore rejected trademark protection
for the word mark/figurative mark
"Deluxe“.10
It stated that the term
was simply praising luxury products and the curved,
silver font only reflected the content of the word "deluxe".
The Board of Appeal of OHIM rejected the
registration of both the word and figurative
mark "EAT GLUTEN FREE“11
and "ALMOND
MARZIPAN“12
. It stated that the word compo-
nents were purely descriptive and the graphic
design was considered trivial.
Katjes also failed with the Court of Justice of the Europe-
an Union (General Court) with its
request for market protection of
the word and figurative mark
"Yoghurt Gums“. The graphic
design of the purely descriptive word component did not
help to make the mark suitable fall trademark protection
9 Federal Patent Court, 23.12.2013, 25 W (pat) 82/12 – SPIRIT 10 OHIM-BoA, 06.03.2014, R 1223/2013-1 – Deluxe 11 OHIM-BoA, 12.05.2014, R 1841/2013-4 – EAT GLUTEN FREE 12 OHIM-BoA, 01.04.2014, R 2441/2013-5 – ALMOND MARZIPAN
because the font and stroke width of the letter was usual
(see also in this respect our Confectionery Industry Spe-
cial Annual Review Newsletter 2013).13
The application submitted by Aldi for
packaging with the label "Classic
strong aroma roasted coffee“ was
considered only to be a direct descrip-
tion of the nature and quality of the pro
"coffee". The figurative elements (cof-
fee beans with a mountain landscape)
was considered typical for coffee and
widespread in the relevant product
area.14
Trademark protection was
therefore rejected.
The word and figurative
mark "OMEGAKids,” on the
other hand, was granted at least a minimum level of
distinctiveness because the mark was not perceived to
be directly descriptive.15
Since the Swedish term "gifflar“
means "crescent shaped wheat
roll,“ it was considered to be de-
scriptive of the goods "bread,
cakes, baked goods, cookies, etc.", the Swedish and
Finnish population have to be considered part of the
relevant target market, so for this reason the word and
figurative mark was not considered to have the neces-
sary distinctive nature. The graphic design did not
change this, either. 16
13 GC, 15.05.2014, T-366/12 – Yoghurt Gums 14 OHIM-BoA, 07.02.2014, R 1672/2013-4 – RÖSTKAFFEE CLASSIC KRÄFTIGES AROMA 15 OHIM-BoA, 05.11.2013, R 1027/2013-5 – OMEGAKIDS 16 GC, 09.07.2014, T-520/12,– Gifflar
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 4/35
Annual Review 2014 2014
The German Federal Supreme Court ordered the dele-
tion of the word and figurative mark
"Gute Laune Drops“ (cheerful drops) for
“fine baked goods” and similar prod-
ucts.17
The Federal Supreme Court,
however, referred the case with regard
to some of the goods, such as ice
cream, chewing gum, coffee, etc., back to the Federal
Patent Court for renewed proceedings. The Federal
Supreme Court held that a simple graphic design was not
grounds for distinctiveness. The fact that the trademark
holder had been using the mark for many years without
objection also did not help the case. Protection of legiti-
mate expectations would only be considered in accord-
ance with trademark law after a period of 10 years.
Practical tip:
The purely decorative design of a descriptive term is not
enough to give a mark the necessary level of distinctive-
ness. The addition of images only help with regard to
registrability if the image does not simply illustrate the
purely descriptive mark.
1.3 Distinctiveness of figurative marks
The application submitted by energy drink
manufacturer Monster Energy for registration
of a peace sign was rejected.18
Although the
mark was considered to have symbolic value,
it nevertheless needed to have a minimum level distinc-
tiveness. In the present case, however, the sign only had
the universal nature of a peace symbol and did not make
reference to a particular manufacturer.
17 Federal Supreme Court, 10.07.2014, I ZB 18/13 – Gute Laune Drops 18 OHIM-BoA, 11.12.2013, R 1285/2013-1 – SYMBOL
The German Federal Patent Court also did not grant any
distinctiveness to the illustrated mark for
a cookie made by Griesson – De
Beukelaer, because it was only a lifelike
representation of a cookie. It was not
considered to have any special design
features, because the spherical shape and decoration
are considered to be usual in the industry for pralines
and confectionery.19
The Federal Patent Court makes
clear that two-dimensional representations of goods or
their packaging on the one hand and three-dimensional
forms of the same goods or their packaging on the other
hand are to be treated in the same way.
In addition, the German Federal Patent Court used this
decision to summarize the requirements of registrability
of a sign if it consists solely of the shape of the product.
According to this summary, a mark can only be regis-
tered if a corresponding mark consists not only of the
representation of characteristics, which are typical for
that type of good or its packaging, but rather displays
characteristic features that depart significantly from the
norm or customs of the sector.
Wrigley was unsuccessful with the following figurative
marks:
The Board of Appeal of OHIM considered this to be only
another usual form in the confectionery market.20
19 Federal Patent Court, 08.01.2014, 25 W (pat) 522/13 20 OHIM-BoA, 17.06.2014, R 168/2014-5 and R 169/2014-5
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 5/35
Annual Review 2014 2014
The OHIM did no even grant the word and figurative
marks “Extra”
trademark protection because the word "Extra” was only
understood as a usual promotional term.21
1.4 Distinctive character of shape-of-product marks
Shape-of-product marks are 3-D marks that represent
the shape of the product itself.
The problem with shape-of-product marks is that it is
difficult for consumers to determine a reference to the
origin of the product simply from the form of the product,
i.e. to recognize the form as a mark. This is due to the
fact that three-dimensional marks are not necessarily
perceived in the same way as word marks or figurative
marks, which are independent of their appearance.
Therefore for registrability it is necessary that the form
must significantly depart from the norm or customs of the
sector.
The Board of Appeal of OHIM considered that the follow-
ing shape-of-product marks did not meet this require-
ment:
22 23
21 OHIM-BoA 19.05.2014, R 218/2014-5 and R 199/2014-5 22 OHIM-BoA, 19.05.2014, R 1911/2013-4 (Grupo Bimbo S.A.B. de C.V.)
24 25
The General Court of the European Union denied the
illustrated 3 D mark in candy form trademark protection.26
It stated that the form of the prod-
uct was in line with the normal
appearance of the goods in ques-
tion (including confectionery).
1.5 Distinctiveness of slogans
At German and European level over the past year, there
have been several decisions about whether slogans can
be registered as a mark. In order to assess the distinc-
tiveness of general advertising messages and slogans,
the same benchmarks apply as for other marks. Se-
quence of words that is like a slogan can have a distinc-
tive nature although it can be considered at the same
time or even primarily as advertising material, however it
cannot be understood on the market exclusively as an
advertisement. That can be the position, in particular,
where those marks are not merely an ordinary advertis-
ing message, but possess a certain originality or reso-
nance, requiring little in the way of interpretation by the
relevant public, or setting off a cognitive process in the
minds of that public.
23 OHIM-BoA, 06.03.2014, R 1405/2013-1 (Intersnack Group GmbH & Co. KG) 24 OHIM-BoA, 03.06.2014, R 2449/2013-2 (Grupo Bimbo S.A.B. de C.V.) 25 OHIM-BoA, 18.11.2013, R 839/2013-4 – FORM OF A BEAR 26 GC, 12.12.2013, T-156/12 – SWEET TEC (see also our Confectionery Industry Special Annual Review 2013 Newsletter)
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 6/35
Annual Review 2014 2014
The General Court of the European Union held that the
slogan "La qualité est la meilleure des recettes“ (in Eng-
lish: "quality is the best recipe“) was not distinctive be-
cause it did not include any reference to the originating
company.27
The slogan was written in simple French,
there was nothing imaginative about it, but only conveyed
the simple message that the mark holder - Dr. August
Oetker - produces quality goods.
OHIM's Board of Appeal rejected protection as a trade-
mark for the slogans "MYDIET"28
, "2good“29
, "FOOD
SHOULD TASTE GOOD“30
and "BE HAPPY"31
because
they were made up of simple English terms which did not
meet the required level of originality and therefore did not
meet the requirements with regard to distinctiveness.
The slogan "WHENEVER – WHEREVER" was classified
as descriptive because the term provided obvious and
direct information about the quality and characteristics of
the product in question, stating that it is available for
consumption everywhere and all times. The slogan there-
fore did not have the necessary level of distinctiveness.32
The German Federal Patent Court stated that it could not
register the Eckes-Granini slogan "we make life more
fruitful“ because there are lots of slogans beginning with
"we make life more …“ and these are only understood as
products that make life easier. For that reason, the slo-
gan was considered only to be praise of the product in an
advertisement that did not display any originality.33
27 GC, 12.02.2014, T-570/11 – La qualité est la meilleure des recettes 28 OHIM-BoA, 13.03.2014, R 2147/2013-1 – MYDIET 29 OHIM-BoA, 27.02.2014, R 996/2013-1 – 2good 30 OHIM-BoA, 22.01.2014, R 671/2013-3 – FOOD SHOULD TASTE GOOD 31 OHIM-BoA, 17.10.2013, R 32/2013-1 – BE HAPPY 32 OHIM-BoA, 14.03.2014, R 845/2013-5 – Whenever - Wherever 33 Federal Patent Court 19.03.2014, 26 W (pat) 534/12 – we make life more fruitful
2. Conflicts between trademarks
2.1 Likelihood of confusion of word marks
The likelihood of confusion between the mark "friends“ by
Ferrero and "CITY OF FRIENDS“ was rejected. The
older mark was only assigned a weak level of distinctive-
ness and the part that distinguishes between the two
marks, "CITY OF”, takes the correspondence between
"friends“ into the background with regard to its percep-
tion.34
At the same time, the Board of Appeal of OHIM
last year affirmed the likelihood of confusion between the
marks "Cool Friends“ and "Friends“ (see in this respect
our Confectionery Industry Special Annual Review News-
letter 2013).35
In the following decision, which was of particular local
relevance, the Association for the Protection of Dresden
Stollen tried to prevent registration of “Dresdner Striezel-
Glühwein” as a mark. The opposition was based on the
collective mark and the geographic indication of source
"Dresdner Stollen”. The Association for the Protection of
Dresden Stollen argued that the marks were similar con-
ceptual because "Striezel“ is a synonym for "Stollen”.
That was not sufficient for the Board of Appeal of OHIM,
however. There was no similarity either with regard to
goods or the mark, so the opposition was rejected.36
Although the marks "MEISTERKORN“ and "MISTER-
CORN“ overlap, the likelihood of confusion under classes
5 and 41 were rejected. In case of class 30, the exact
product must be assigned. The likelihood of confusion
was affirmed, for example, for "bread, baked goods”, but
not for "flour, pasta, cocoa powder”.37
34 OHIM-BoA, 06.03.2014, R 1240/2012-1 – CITY OF FRIENDS 35 OHIM-BoA, 08.11.2012, R 2021/2011-1 – COOL FRIENDS 36 OHIM-BoA, 17.10.2013, R 1825/2012-4 – DRESDNER STRIEZEL-GLÜHWEIN 37 OHIM-BoA, 09.10.2013, R 2143/2012-2 – MEISTERKORN
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 7/35
Annual Review 2014 2014
The General Court of the European Union confirmed the
likelihood of confusion between "JUNGBORN“ and
"BORN”, thereby derogating from the principle that the
market primarily pays attention to similarities in the be-
ginning of the mark.38
The fact that the younger mark
consists solely of the older mark and another part added
before it, was considered an indication of similarity.
The German Federal Patent Court rejected Eckes-
Granini’s application for likelihood of confusion between
"RAMBA ZAMBA“ and "ZAMBA”.39
The word "Zamba“
here was not a feature of the overall impression of the
younger mark and furthermore, "Ramba Zamba“ is a
synonym for noise, fun, ruckus, etc.
Likelihood of confusion was confirmed between "MIS-
SANA“ and "MILKANA“ - in particular with regard to visu-
al similarities.40
The German Federal Patent Court –
unlike the trademark office – considered the beginning
and/or end component of the comparable mark ("MI-“
respectively "-ANA“) as not being "used" in the area of
milk products (yet), because there were no sufficient
discernible indicators of this. The examples of marks
given by the trademark office with the initial letters "MI-“
("Milfina“, "Milsani“, "Milbona“, "Milino“ and "Milram“)
when not considered grounds for the assumption that the
beginning of the word was being used in the product area
in question. Nothing is known either with regard to the
use situation of the total of 625 marks listed by the
trademark office registered in class 29 that apparently
end in "-ana“.
38 GC, 11.06.2014, T-401/12 – JUNGBORN 39 Federal Patent Court, 12.02.2014, 26 W (pat) 545/12 – RAMBA ZAMBA 40 Federal Patent Court, 22.01.2014, 28 W (pat) 107/12 – MISSANA
2.2 Likelihood of confusion of complex trade-
marks
In 2013/2014, the following noteworthy decisions were
made at European and German level with regard of
"complex marks“ (combined word/figurative marks):
The General Court of the European Union rejected the
possibility of the likelihood of confusion
between the figurative mark ”goldstück“
(gold coin) and the word mark "Goldsteig“
(golden climb).41
The old mark was granted only a week
level of distinctiveness and the marks were considered to
be more different than similar. While "Goldsteig a moun-
tain trail in the Bavarian forest, "gold coins" refer to a
gold piece or a vulnerable person.
With regard to the word and figurative mark "MI-
LANOWEK CREAM FUDGE, the Gen-
eral Court of the European Union con-
sidered that there was no likelihood of
confusion with the following older Ger-
man marks held him by PICO Food
GmbH:42
41 GC, 29.01.2014, T-47/13 – goldstück 42
GC, 09.04.2014, T-623/11– MILANOWEK CREAM FUDGE
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 8/35
Annual Review 2014 2014
Although the marks were not considered to be complete-
ly dissimilar, particularly with regard to the cow. But this
symbol was allocated only a week level of distinctive-
ness. Otherwise the marks would have crucial differ-
ences, in particular, there was no overlapping in the word
components, except for the "CREAM FUDGE" label.
The General Court of the Euro-
pean Union did not consider that
there was any likelihood of con-
fusion between the
word/figurative mark "Sani“ and
two older word/figurative marks
"Hani“ and "RANI“. There was
no visual or conceptual similarity
and only a slight phonetic similarity of the marks.43
Between the word mark "GUMMI LUNCH“ held by Me-
derer and the word/figurative
mark "GUMMY“, likelihood of
confusion was affirmed as a
result of the visual and phonetic similarity between the
marks with regard to the first word element for the Span-
ish market, which was the market at issue in this case.44
Mederer was also unsuccessful when it
came to the word and figurative mark
"Gummi Bear Rings“ because confusion
with the word and figurative mark
"GUMMY“ was affirmed. The consumers could have
considered the more recent mark to be a variation of the
older mark.45
43 GC, 24.06.2014, T-523/12 – SANI 44 OHIM-BoA, 07.04.2014, R 780/2013-5 – GUMMI LUNCH 45 OHIM-BoA, 16.12.2013, R 225/2013-5 – Gummi Bear-Rings
Likelihood of confusion was assumed for the marks
"Cléd’Or“ and "COTE D’OR”.46
In addition to the similarity of the product and the marks,
the opposing trademark had an enhanced distinctive
character in the Benelux states for "chocolate products“.
There is likelihood of confusion be-
tween the word mark "BLACKPOW-
ERENERGY” and a mark relating to
the design of a chocolate bar with
"Zetti BLACK POWER 88 % CACAO
MIT GUARANA" printed on it because
the term „BLACK POWER" is the
dominant element of the older mark
and the only distinctive element of the
younger mark.47
The figurative mark "SELECT“ was confirmed to have an
average level of distinctiveness, despite being a descrip-
tive term. Nevertheless, any likelihood of confusion with
"7 SELECT“ was rejected because the two marks only
had the week element "Select“ in common, both the
figurative marks were otherwise very different.48
46 OHIM-BoA, 21.11.2013, R 1005/2013-1 – Cléd'Or 47 OHIM-BoA, 30.04.2014, R 2206/2013-5 – BLACKPOWERENERGY 48 OHIM-BoA, 11.06.2014, R 736/2013-2 – 7 SELECT
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 9/35
Annual Review 2014 2014
A decision in which the distinctive nature of a mark was
actually acknowledged correctly at EU level during the
assessment of the likelihood of confusion.
In turn, the Board of Appeal of OHIM, did not do this in
the subsequent decision. Here,
likelihood of confusion was
acknowledged to exist between
the marks "Deliplus“ and "DELI’MAX“ because the be-
ginning of the words is identical and the two added terms
"plus“ (French for "more“) and "max“ (an abbreviation of
"maximum“) describe a comparison between things.49
The Board of Appeal of OHIM affirmed the likelihood of
confusion between the word and
figurative mark "Milki“ and
"MILKID“,50
although the registered
mark included a range of additional
elements (a milk drop wearing a cap
and smiling while lick it's lips, as well as a being sur-
rounded by splashes of liquid). It was considered that
consumers perceive this as purely decorative. Otherwise,
the marks differ only on the basis of the last letter "D“.
The General Court of the European Union confirmed that
there was likelihood of confusion be-
tween the word and figurative mark
"Maestro de Olive“ and "MAESTRO“.51
The figurative element of the registered
mark and also the supplement "de
Olive“ were considered to be of only a subordinate nature
here. Therefore, "Maestro“ was the more distinctive and
dominant component in the marks.
49 OHIM-BoA, 02.04.2014, R 1168/2013-5 – Deliplus 50 OHIM-BoA, 21.11.2013, R 1268/2013 - MILKI 51 GC, 05.12.2013, T-4/12 – Maestro de Olive
2.3. Conflicts in product packaging
The Higher Regional Court of Cologne
issued a judgment in the dispute between
Haribo and Lindt & Sprüngli on the in-
fringement of the word mark "GOLDBÄR“
(gold bear) by the chocolate figures known
as "Lindt-Teddys” packed in gold foil.52
Unlike Cologne Regional Court, the court did not consid-
er the older mark to have been infringed. In principle, it is
possible for a word mark to be breached by the use of a
three-dimensional design. The significant factor, howev-
er, is the printing of the Lindt logo, as well as the name
"Lindt Teddy“. This could be considered evidence of the
origin, especially since the product is also similar to
Lindt’s well-known “gold bunnies”.
The Higher Regional Court of Cologne also decided on
the imitation of chocolate bars. A Turkish confectionery
manufacturer offered the following chocolate bars with
the names "Winergy“ and "Wish“ at a confectionery trade
fair:
Mars objected to the packaging design as unpermitted
imitations of the packaging design of "Bounty“ and
"Snickers“. The court did not consider the packaging of
"Wish“ as worthy of prohibition because it allegedly has
an independent appearance. "Winergy“, however, took
over the characteristic features of the "Snickers“ packag-
ing and simply converted this into a more dynamic form.
Therefore, an anti-competitive passing-off was affirmed.53
52 Cologne Higher Regional Court, 11.04.2014, 6 U 230/12 – Goldbär 53 Cologne Higher Regional Court, 20.12.2013, 6 U 85/13 – Bounty and Snickers
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 10/35
Annual Review 2014 2014
2.4 Similarity of goods
As justification of likelihood of confusion, not only the
similarity of the marks is a deciding factor. The older
mark must also be protected for goods and services that
are identical or similar to the newly applied mark.
The products "ice cream, frozen yogurt, etc.“ are consid-
ered similar to "chocolate products and items“ in the
same class.54
"Pastries” in class 30 are considered similar to "chocolate
and chocolate bars with and without additions“ because
both goods are consumed in order to fulfill the need for
something sweet. They are also often mixed together,
e.g. in deserts or small cakes.55
On the other hand, fruit sauces were considered different
from "baked goods”.56
The goods are not considered
complementary because it is not apparent that it is es-
sential or even usual in the trade to add fruit sauces for
the consumption of baked goods.
The products "jams, compotes” in class 29 and "sugar;
honey, molasses” in class 30 are similar to the products
"sweets, chocolate products, confectionery”, because
they complement each other mutually.57
There is also
considered to be a certain similarity to "coffee”, however,
only a slight similarity to "milk and milk products“.
54 OHIM-BoA, 21.11.2013, R 1007/2013-1 – Cléd'Or 55 OHIM-BoA, 30.04.2014, R 2206/2013-5 – BLACKPOWERENERGY 56 OHIM-BoA, 17.10.2013, R 1825/2012-4 – DRESDNER STRIEZEL-GLÜHWEIN 57 OHIM-BoA, 17.02.2014, R 622/2013-1 – götterfunken
A high level of similarity was affirmed, however, between
“milk and milk products” and “coffee, cocoa and choco-
late drinks” in class 30.58
3. Proof of genuine use
In principle, marks can only be implemented if they are
used. Upon the applicant's request, the holder of an older
mark must provide proof that the mark is being genuinely
used or that there are justified reasons for its lack of use.
An interesting decision on proof of use was issued by the
General Court of the European Union with regard to the
mark "Passaia".59
During opposition proceedings, Rivella
had to prove genuine use of its international mark "Pas-
saia“ for Germany. In order to do so, Rivella submitted
use material from Switzerland referring to an agreement
between Germany and Switzerland dating back to 1892
that makes use in the other country in each case equal to
domestic use. The General Court decided that this
agreement, however, only applies between the two
states and has no influence on community trade law. Use
in Switzerland therefore provides no proof of use for a
German part of an IR-trademark in proceedings before
the EU Trademark Office.
58 Federal Patent Court, 22.01.2014, 28 W (pat) 107/12 – MISSANA 59 GC, 12.12.2013, C445/ 12 P - BASKAYA
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 11/35
Annual Review 2014 2014
Despite the submission of a written declaration by its
general manager, two photos of displays in its patis-
series, monthly lists of chocolate sales in a year (annual-
ly probably 40 kg to 60 kg of handmade chocolate prod-
ucts) and excerpts from its website, Reber was not suc-
cessful in providing proof of genuine use of the mark
"WALZERTRAUM“.60
The European Court of Justice
rules that even though the products are handmade, the
quantities sold are not sufficient to a serious portion of
the German chocolate and praline market, meaning that
the mark has only marginal local significance. The argu-
ment that the products are sold on the basis of exclusivity
and their exquisite flavor in only a few sales locations
and not available by mail or over the Internet was not
convincing.
It is a notable factor in the decision that the court referred
only to the generic term in the list of goods, in this case
"chocolate products" and not in particular to pralines. It
was considered to be up to the trademark owner to put
the list of goods into concrete terms if its mark was to
enjoy protection for particular goods.
60 ECJ, 17.07.2014, C141/ 13 P – Walzer Traum
Practical tip:
Trademark owners should check the list of goods for old
marks and take into account any limitation in the list of
goods for the concrete goods/services being used. In
case of new mark applications, in addition to the generic
terms, at least the most important individual
goods/service must also be listed.
Margret Knitter, LL.M.
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 12/35
Annual Review 2014 2014
Effective protection against imitations at the Confec-
tionery Trade Fair
Trade fairs are irreplaceable for the exchange of innova-
tions, ideas and inspiration. Trade fairs are irreplaceable
for business. Trade fairs can generate a spirit of opti-
mism. On a large scale for the entire industry or on a
small scale for the individual companies. Trade fairs,
however, can also become a bitter experience. In particu-
lar if an unscrupulous competitor displays imitations,
perhaps even in the same place where the company's
goods are on display.
This is what happened to De Beukelaer. An almost iden-
tical copy of their “Mikado” cookie sticks was exhibited by
a foreign competitor. De Beukelaer defended itself and
Cologne Higher Regional Court considered the imitation
to be an anti-competitive therefore misleading to domes-
tic consumers. The Federal Court of Justice, however,
set aside this judgment (judgment of 23.102014, Case: I
ZR 133/13). Not because it assessed the imitator differ-
ently but because it had only been proven that the imita-
tor presented the product at the trade fair. Simple
presentation at a trade fair cannot be the basis for an
assumption that the product is also actually on offer do-
mestically.
But what can we learn now from the judgment? Is it actu-
ally possible to initiate proceedings against imitations at
trade fairs? Yes, effective proceedings are possible. This
requires concentrated action between manufacturers and
their attorneys. An overview of the most important princi-
ples:
1. Preparation
Expect the imitator to know what they are doing and act
in an appropriately clever and prepared manner. You
need to be just as prepared.
If you are aware of a potential imitator, check whether
they are exhibiting at the trade fair. Also check whether
they deliver to or supply Germany. Collect material ac-
cordingly. In order to avoid decisions such as the one
above, manufacturers must be able to prove in case of
doubt that the imitator also supplies Germany.
Even if exhibiting does not result in a legal assumption of
offering, in fact, this is often the case. And anyone mak-
ing an offer must necessarily do so to third parties. The
chances of exposing the imitators are therefore good.
If this is unsuccessful despite all of these efforts, it may
at least be possible to prohibit the exhibition.
2. Speed
A trade fair means business and in our experience, most
of the business is done over the first few days, so be
aware that your competitor is expecting already to have
completed a significant amount of business before you
are able to prevent the imitation. So act quickly.
Major courts often have an emergency service at large
trade fairs, which can act quickly and effectively even on
Saturdays. If the manufacturer and attorney work well
together, an injunction can be issued very quickly, some-
times within a day, six days per week.
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 13/35
Annual Review 2014 2014
3. Proceedings
In cases relating to trade fairs, the courts often make
decisions based solely on your submission. They there-
fore usually issue an order without hearing the other side.
Take advantage of this effect of surprise effect. The in-
junction can be issued by the court officer directly at the
trade fair. If this happens early enough, the infringer will
not be able to perform a lot of business with the imita-
tions. His strategy fails to succeed.
A decisive factor can also be the deterrent effect, be-
cause who would like to have a court officer at their trade
fair stand.
4. Remedies
All intellectual property rights and copyrights can be used
as the basis for an application. In our experience, appli-
cations based on registered protective rights – in particu-
lar marks and registered designs – have the best and
quickest chances of success. If, as so often, the product
for packaging form is important in addition to the design,
the registration of three-dimensional marks should also
be considered. The protection of your product at the
trade fair therefore begins already with careful registra-
tion.
If you do not hold any registered trademark rights, you
can refer to the presence of an anti-competitive violation.
It may also be possible to assert a claim for unregistered
designs or copyrights.
5. Cost
If your application is justified, the costs of the proceed-
ings and the attorneys that you hire will in principle be the
responsibility of the imitator. If, in addition, the imitator is
headquartered outside of the EU, additional legal
measures can be taken in order to secure the costs in-
curred on a preliminary basis all at least to make later
enforcement easier.
Dr. Magnus Hirsch
Christoph Mayerhöffer
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 14/35
Annual Review 2014 2014
Descriptive marks: Design instead of trademark?
Very often in practice descriptive names are used for
products and services. This means that the customer
immediately understands from the “brand" what the
product is. The use of descriptions that are in every day
usage in speech is also an approach that is often chosen
for search engine optimization online. In this way, cus-
tomers are of course able to find a television magazine
named “televisionmagazine.com” very easily online.
From a trademark perspective, names of this kind, how-
ever, cannot be protected. This is because names that
are descriptive of the product or service that they relate
to or that are not distinctive are considered to be abso-
lutely barred from trademark protection. Even when the
application is made to the office (either the German Pa-
tent and Trade Mark Office or the Office for Harmoniza-
tion in the Internal Market, which is responsible for Euro-
pean Community trademarks) will check whether there
are absolute grounds for refusal of this kind.
The office will subsequently reject the application for
trademark protection. Users will not receive market regis-
tration and will therefore be unprotected.
For trademark registration, in addition to the simple name
(which may only consist of standards texts symbols), the
registrant may also choose to take the alternative route
of applying for registration of a word and figurative mark.
This does not provide protection for the word component,
which cannot be protected, but the name as a whole –
i.e. together with the graphic elements – can be granted
a certain level of protection.
There are, however, an increasing number of cases in
which such marks have also been rejected (cf. overview
of case law above, 1.2.). The registration practice of
offices is becoming more restrictive in this respect. In
cases like this, the consideration arises of whether a text
can at least be protected as a design in accordance with
the German Design Act or in accordance with the Com-
munity Design Regulation. The hurdle of the absolute bar
on protection is set in a different way for designs than for
trademarks. The different registrations may therefore
have different results in practice.
Requirements for the protection of a design
When the protection in accordance with the German
Design Act or the Community Design Regulation is pos-
sible depends on the concrete individual case. The fol-
lowing, therefore, is intended to provide the basic re-
quirements for protection in accordance with the German
Design Act and the Community Design Regulation:
A design is characterized by the fact that it uses the
characteristics of lines, contours, colors, surface struc-
ture, or the materials of the product itself, or its decora-
tion. This may include any industrial or craft product,
including packaging, features, graphic symbols, and
typographic fonts, as well as details that contribute to a
complex product.1
Important: in order to register a project under the German
Design Act, it must be new and unique. A design is con-
sidered to be new if no identical design has previously
been issued publicly. In any case, the concept of "relative
innovation" applies to designs. According to this concept,
a design can still be registered as "new" if it has already
been registered by the owner a maximum of 12 months
previously.
1 On (the new German) design law overall Schicker/Haug, NJW 2014
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 15/35
Annual Review 2014 2014
The prerequisite for being considered unique is that in its
overall impression of the design must be different from
that of older designs. Whether the design is different is
interpreted based on its "individual nature". This does not
require any design result that is beyond the average
ability of a designer.2 In this respect, no qualitative as-
sessment is performed. The question relates more to
quantitative elements. The question of whether a design
is unique is based on observation and comparison as to
whether the appearance of the design is different from
every other example of the previously known form.3
Design protection exists only from the time of registration
in the design register maintained by the German Patent
and Trade Mark Office or the Office for Harmonization.
From the time of registration the design it is protected for
an initial period of five years. The protection can be ex-
tended by five years in each case up to a maximum pro-
tection period of 25 years.
Alternatively, protection based an unregistered communi-
ty design can be considered. No registration is necessary
for an unregistered community design. Protection is cre-
ated simply through being made available to the public. A
design is made public by being issued, offered, all pub-
lished in some other way. In case of an unregistered
design, the project must still be new and unique. The
requirements here of substantially the same as under
German design law. From a procedural point of view it
must be considered that a holder of an unregistered
design must provide proof that it has made public the
sample.4 Protection under as an unregistered community
design is limited to simple protection against imitation. In
addition, the duration of protection is limited to three
years from the first publication.
2 Eichmann/von Falkenstein, GeschmacksmusterG, Section 2 margin note 12. 3 Eichmann/von Falkenstein, GeschmacksmusterG, Section 2 margin note 12. 4Federal Court of Justice, 13.12.2012 – I ZR 23/12
Whether protection by means of a design can provide at
least a kind of "backup protection" in concrete cases can
only be determined specifically on a case-by-case basis.
In practice, however, some cases are known in which
protection of a design under the circumstances has been
successful in case of descriptive names.
Practical tip:
If a text with graphic design is intended to be used as a
trademark but is of a descriptive nature, the option of
also protecting this work as a design should be consid-
ered as an early stage. If, therefore, it becomes apparent
within 12 months of the time of first publication or of the
application that protection as a mark is going to be re-
fused, if necessary, protection as a design can provide at
least a certain level of basic protection. We will gladly
advise you on the details.
Stefan C. Schicker, LL.M
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 16/35
Annual Review 2014 2014
COMPETITION LAW
Negative product assessments and possible legal
defense
In many cases, product tests offer consumers a good
opportunity for orientation. This applies in particular in
case for product markets where it is almost impossible to
get a good overview of the selection, such as in particular
the area of groceries. Products that receive good as-
sessments represent a win-win situation that calls for
consumers and for the manufacturer involved. In case of
work test results, on the other hand, manufacturers are
often threatened with damage to their image that could
endanger their existence.
In cases of this kind ("worst-case scenario“), the compa-
nies affected should carefully weigh up further counter-
measures. In addition to a positive image campaign, in
particular through successful public relations work, legal
steps can also be considered on an individual basis. The
fact that manufacturers can defend themselves against
well-known institutions such as Stiftung Warentest was
impressively demonstrated last year in the "Ritter Sport”
case.
1. Extent of the freedom of the tester’s opinion
The legal evaluation of the product test consists of
weighing the basic right of a product tester to freedom to
express his or her opinion (Article 5 (1) German Basic
Law) and the right to carry on an established business,
which is also constitutionally protected (Article 12 (1)
Basic Law). The right to carry on an established business
includes everything relating to the operation that makes it
possible for the business to develop and to be active on
the market and therefore makes up the economic value
of the operation as an existing unit.
During this weighting process, the content of the test
assessment is to be determined. Accordingly, each
statement made is to be classified as either a factual
statement or as a value judgment:
Factual statements are characterized by the fact that
they all based on evidence. In contrast, value judgments
are statements that all characterized by elements of
opinion, views, or thoughts and can therefore not be
proven to be correct or incorrect. The benchmark for
classification as claims the fact that can be checked or as
a value judgment that cannot be checked is the under-
standing of an unbiased and informed public. The signifi-
cant criterion here is the wording of the statement, which
is not to be taken in isolation but rather within the full
context.
The scope of protection of the freedom of opinion is
broad. Factual statements that are proven to be untrue,
however, are not included in the scope of protection of
freedom of opinion. Value judgments are also not pro-
tected when they cross the limit of "abusive criticism“, i.e.
they are no longer based on factual argument, but are
primarily aimed at belittling the supplier in question or its
products.
2. Legal requirements for a test publication
The publication of a comparative product test is generally
permissible if the test is done without any competitive
intention on the part of the tester and the inspection is
performed in a neutral and knowledgeable way and with
an effort at objective accuracy. The inspections by institu-
tions such as Stiftung Warentest must therefore be con-
sidered different from tests that product manufacturers
arrange and perform themselves in their own competitive
interests.
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 17/35
Annual Review 2014 2014
With regard to the appropriateness of the testing meth-
ods, the selection of the test items, and the presentation
of the inspection, legal precedence grants testers exten-
sive freedom of opinion. For the investigation to be con-
sidered objective, the testing methods must be recog-
nized or at least justifiable. In addition, the product tester
must ensure that the investigation performed is objective,
i.e. that it is performed by qualified staff with a certain
level of expertise. If this objectivity is not insured, the limit
of what is permissible has been passed, because criti-
cisms of products may not be expressed arbitrarily.
In the presentation of the test results, it must also be
ensured that these are neutral and that they cannot cre-
ate an incorrect overall image for the average reader.
Therefore the presentation must not be performed in a
distorting or misleading manner. If necessary for under-
standing, statements must include and explanatory sup-
plement.
3. "Secondary burden of proof” on the tester in
court proceedings
If a negatively affected company decides to go to court, it
must prove, unless a case of abusive criticism is given,
the falsehood of the disputed factual claims.
In any case, the product tester may be subject to "sec-
ondary obligation to provide evidence and burden of
proof“. A plaintiff cannot be reasonably expected to justify
him/herself "out of the blue” and in doing so have to
make public circumstances relating to its business area
in a scope that could be avoided in case of proper de-
fense by the product tester. If a product tester does not
comply with this secondary obligation to provide evi-
dence and burden of proof, the court will assume that the
tester’s results are inaccurate. The "secondary obligation
to provide evidence and burden of proof” of the tester is
not yet created as a result of the fact that the plaintiff
disputes the accuracy of the test result overall. Rather,
the plaintiff must demonstrate substantiated doubts about
accuracy.
In the legal dispute between Alfred Ritter and Stiftung
Warentest, the crucial question was whether the sub-
stance piperonal processed in the chocolate was chemi-
cally manufactured, or whether it is a natural flavoring
within the meaning of Article 16 (4) EU Flavoring Regula-
tion (no. 1334/2008/EU). Ritter submitted that it could not
prove within the court proceedings how the substance
piperonal is obtained because it is obtained by suppliers
and cannot be published because it is an operational
secret. In any case, Ritter submitted to the court a guar-
antee by the supplier stating that piperonal was made of
natural flavors and was not a chemical product.
The court found this substantiated submission by the
plaintiff to be sufficient in order to presume a secondary
obligation to submit evidence and burden of proof on the
part of the defendant, Stiftung Warentest.1 The latter then
had to provide evidence and to prove how it obtained the
positive proof that the piperonal flavoring included in the
chocolate was chemically manufactured and not naturally
obtained. Stiftung Warentest, however, was not able to
provide the proof because it had only suspected during
the product test that the piperonal substance proven to
be in the chocolate was chemically produced without
informing the readers that this was only a suspicion.
4. Further case studies from judicial practice
Abusive criticism was assumed, for example, in a case in
which a restaurant was described as follows: “the restau-
rant’s prices are out of this world. The management
drives the guests to run riot with its policy of targeted
understaffing. It is an act of extreme daring to hand itself
1 Munich Higher Regional Court, 09.09.2014 – 18 U 516/14.
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 18/35
Annual Review 2014 2014
over to fast food providers in the daylight robbery catego-
ry.“2
The description of a country hotel on a hotel evaluation
portal as a "hen coop", on the other hand, was not con-
sidered to be abusive criticism.3 In other contexts, how-
ever, the phrase "hen coop" could well be regarded as
abusive criticism.
The legal assessment of a process as relevant under
criminal law does not initially constitute a statement of
fact, but a value judgment.4 A value judgement cannot be
assumed, however, if the focus is not on the legal as-
sessment of an existing state of affairs, but rather in-
cludes the legal appraisal of a specific event, such as, for
example, in the formulation "hygienic shortcomings".
2 Frankfurt Higher Regional Court, 24.11.1989 – 6 W 122/89. 3 Stuttgart Higher Regional Court, 11.09.2013 - 4 U 88/13 4 Düsseldorf Regional Court, 09.01.2013 – 12 O 392/11.
5. Different claims by the company at issue
In case of a legal infringement, the affected company has
a claim to compensation for damages, injunctive relief
and removal. Under certain conditions, certain counter-
statement claims are possible, with it being possible to
place the counterstatement at the same location where
the infringing statement was made. The counterstate-
ment is a statement by the affected party itself. In case of
an unpermitted factual claim, a company, however also
request a cancelation or correction by the tester itself. In
comparison with a counterstatement, this is a much more
effective instrument because the tester must state public-
ly that the previous statement was untrue.
Dr. Thomas Haug, LL.M. (Exeter)
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 19/35
Annual Review 2014 2014
IT & DIGITAL BUSINESS
New Consumer Law for the online trading sector –
What is actually new? What are the new information
obligations? How has the right of withdrawal
changed?
A. INTRODUCTION
The German Act Implementing the EU Directive on Con-
sumer Rights of 25 October 2011 has taken into effect on
13 June 2014.
B. WHAT IS REALLY NEW?
1. Confusing regulations
It is not really anything new that consumer rights regula-
tions are confusing. The changes do, however, exacer-
bate the confusion here quite a bit: certain regulations
are not applicable to certain industries (e. g., travel ser-
vices, transportation, grocery deliveries, § 312 para. 2 of
the Bürgerliches Gesetzbuch neu (the Civil Code New,
the “BGB NEW”)). The law establishes — to an even
greater extent than it did before — various standards for
information obligations in the e-commerce sector in a
more narrow sense: from distance sales, to formation of
sales contracts outside of one’s business premises, to
retail stationary (§ 312a et seq. BGB New).
2. Incorporation of retail stationary
What is really new, however, is that certain — both
amended or new — regulations are now expressly appli-
cable to the retail stationary trade (§ 312a BGB New) as
well.
paid-for services shall have to be expressly agreed to
(e.g. transport, assembly services, etc.).
consumers must have a standard free of charge
payment option (already established jurisprudence for
some time now). To the extent that costs for any oth-
er payment method are incurred, such costs may not
exceed the costs the enterprise incurs for using the
payment method.
individual traders making contact by telephone for
sales purposes must disclose (i) their identity at the
beginning of the telephone call and (ii) the business
nature of the call. This shall apply independent of the
quite narrow conditions for the legality of such tele-
phone calls.
no fees over and above those for the mere use of the
telecommunication service may be charged for ser-
vice hotlines. Traders will, therefore, have to offer ei-
ther a toll-free or local number.
3. Information obligations for the retail stationary
trade
In addition to the information obligations for distance
sales and for the formation of sales contracts outside
one’s business premises, certain new information obliga-
tions shall now be applicable to and obligatory for retail
stationary (§ 312 a para. 2 BGB New in conjunction with
Article 246 para. 1 EGBGB New).
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 20/35
Annual Review 2014 2014
4. Certain information to become constituents of
contracts
It is new that certain information obligations shall now
automatically become a constituent of contracts for both
distance sales contracts and sales contracts being
formed outside one’s business premises (§ 312 d para. 1
BGB New).
5. Information obligations for mobile websites
and smartphone apps
Information obligations are being made easier for dis-
tance sales contracts through any means of communica-
tion that has only limited presentation options (such as
mobile websites or smartphone apps). What’s new?
Moving forward, informing consumers of the material
qualities of the goods or services, the identity of the en-
terprise, the total price, the existence of a right of with-
drawal, the term of the contract, and the terms and condi-
tions governing any termination of contract will be suffi-
cient.
6. Delivery restrictions and methods of payment
What’s new for electronic business transactions? The
following: traders shall — by no later than the com-
mencement of the ordering process — have to clearly
articulate whether there are any delivery restrictions and
what methods of payment the trader accepts.
C. CHANGES TO THE RIGHT OF WITHDRAWAL
The changes to the right of withdrawal are even more
extensive. And here is an overview:
1. No more return right
Up to now, the statutory right of withdrawal could be
substituted with a so-called right of return. This right of
return will no longer exist as of 13 June 2014.
2. Reforming statutory exceptions to the right of
withdrawal
At present, applicable law already provides for numerous
situations where consumers are not supposed to be
entitled to any right of withdrawal. The changes incorpo-
rate additional new exceptions to the right of withdrawal
(§ 312 g para. 2 sent. 1 BGB New) and therefore serve to
implement the final catalogue set forth in the Consumer
Rights Directive.
What is new here is the exception for alcoholic beverage
supply agreements, with prices having been agreed to as
of the date the agreement had been entered into, but
where (i) beverages can be supplied by no earlier than
thirty (30) days of the agreement having been entered
into and (ii) the current value of the beverages are de-
pendent upon market fluctuations that the trader has no
influence over.
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 21/35
Annual Review 2014 2014
3. Single withdrawal period
Commencing as of 13 June 2014, there shall be a single
withdrawal period of fourteen (14) days throughout Eu-
rope. Germany has long had two withdrawal periods: (i) a
general fourteen (14) day period and (ii) an extended
period of one (1) month in the event traders did not —
immediately after the formation of a contract — notify
consumers that they had a right of withdrawal.
4. No more indefinite right of withdrawal
Present legislation provides for the possibility that the
right of withdrawal shall be indefinite in the event that
traders have not duly notified consumers of their right of
withdrawal. But the new legislation provides for consum-
ers’ right of withdrawal lapsing by no later than twelve
(12) months and fourteen (14) days from receipt of goods
(distance sales) or of the formation of the contract.
5. Declaration of withdrawal
Consumers shall no longer have to declare their with-
drawal in written form, as has hitherto been the case
(§ 355 BGB). An unambiguous declaration will suffice;
there need not be any reason for the withdrawal. A with-
drawal by merely returning the goods shall no longer be
possible, save for where the parties have expressly
agreed to this. Sending the withdrawal in due time shall
be sufficient for complying with the deadline here.
6. Obligation to provide a sample withdrawal form
The new regulations provide for traders being obligated
to provide consumers with a so-called sample withdrawal
form for distance sales and for the formation of sales
contracts outside their business premises (§ 312 d para.
1 sent. 1 BGB New in conjunction with Article 246 a § 1
para. 2 sent. 1 no. 1 EGBGB New). This shall have to be
done in a way adapted to the method of distance com-
munication used. Traders can provide consumers with
the withdrawal form on their website, such that it is capa-
ble of being filled out by consumers and electronically
transmitted to the online retailer. Should consumers use
the sample withdrawal form provided online, then traders
shall have to confirm receipt of withdrawal without undue
delay using some permanent medium (in an email, say, §
356 para. 1 sent. 2 BGB New).
7. Cap on shipping/return shipping costs
The present legal situation provides for traders being
obligated to reimburse consumers for the full amount of
any shipping costs in the event of an effective withdraw-
al.
The new legislation does clarify that traders have to re-
imburse shipping costs (§ 357 para. 2 sent. 1 BGB New),
but the amount of this reimbursement is capped. Should
any consumer opt for a shipping method that is more
expensive than the standard shipping offered by the
trader, then that consumer shall have to bear any addi-
tional costs in the event they exercise their right of with-
drawal (§ 357 para. 2 sent. 2 BGB New).
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 22/35
Annual Review 2014 2014
Another new development here is that consumers shall
have to bear any return shipping costs regardless of the
goods’ value. Lawmakers are, specifically, repealing the
€ 40.00 clause that has existed up to now.
8. Speedier settlement of withdrawals
Under the new legislation, goods must be returned within
fourteen (14) days (§ 357 para. 1 BGB New) of receipt of
a withdrawal notification. Furthermore, the purchase
price has to be reimbursed by using the same method of
payment that was used to render payment, unless other-
wise agreed upon with the consumers (§ 357 para. 3
BGB New).
9. Withdrawal right
Under the new legislation, traders shall have a withdraw-
al right regarding refunds until such time as the goods
are returned to them or, at minimum, until such time that
it has been evidenced by the consumer that s/he has
sent the goods (§ 357 para. 4 BGB New).
10. Compensation for value lost
In future, consumers shall have to pay compensation for
value lost only if the goods have been handled in a man-
ner that was not necessary for inspecting the quality of
the goods (§ 357 para. 7 BGB New). The new legislation
fully dispenses with any compensation for value lost on
account of the goods having been used.
It also clarifies expressly that consumers shall not have
to render any compensation for value lost in the event
they withdraw from digital content supply agreements.
D. CONCLUSION
In the confectionery industry, the following also applies:
All market participants who are liable for forms of con-
tracts or interactive websites where orders can be placed
will have to use their best efforts and the greatest of care
to adjust their services to the new legal situation. The
e-commerce platform analyses that have already been
conducted show that the “devil” is in the detail here, as is
so often the case.
Elisabeth Noltenius, LL.M [email protected]
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 23/35
Annual Review 2014 2014
MEDIA AND ENTERTAINMENT LAW
Guideline on product placement
Product placement is customary primarily in the film and
television industry, however it is only a legitimate practice
under certain conditions. In this process, products and
services are integrated into broadcasts. Product place-
ment after all means "the effective tendency to blur the
boundaries between reality and advertising" (Rhineland-
Palatinate Higher Administrative Court, 22.8.2013, Case:
2 A 10002/13.OVG).
Particularly in the confectionery industry, integrating
products into films and television programming is a popu-
lar way of promoting sales. For example, various Ferrero
products could be seen in the display window of "Spät-
kauf“, a kiosk and meeting place of members of the show
"GZSZ" on an advertising poster.
Another example is the Bahlsen chocolate cookie "Pick
up!", which was seen in the show "Dschungelcamp", and
in the Matthias Schweighöfer comedy "Schlussmacher".
Product placement is defined as the explicit mentioning
or display of goods, services, names, trademarks, activi-
ties by a manufacturer of goods or a service provider in
broadcasts in exchange for payment or other similar
consideration with the aim of promoting sales. The provi-
sion of products or services without payment is product
placement if the goods or services in question are of
significant volume. In principle, product placement is
impermissible, as is thematic placement and surreptitious
advertising. This guarantees the separation between
editorial content and advertising ("separation require-
ment"). In any case, Section 7(7) German Interstate
Treaty on Broadcasting permits exceptions from this
prohibition.
1. Requirements for permissible product placement
Section 7(7) Interstate Treaty on Broadcasting eases the
strict requirement of separation between programming
and advertising somewhat. Release from the separation
requirement, however remains limited to a few excep-
tions, and these are subject to tight conditions.
a) Maintenance of editorial responsibility (no. 1)
In addition, maintenance of editorial responsibility and
independence with regard to content and broadcasting
space must still be guaranteed. The significant content of
product placement, i.e. the subject matter, as well as the
type of placement, must be approved by the editorial
staff. Those responsible for editing must inform the
broadcaster whether product placement will take place
and if so which products and services are involved.
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 24/35
Annual Review 2014 2014
b) No promotional references (no. 2)
In order to prevent a further easing of the separation
requirements, no direct promotional references to the
acquisition of products and services can be made. This
means that the trademark of the product, for example a
refrigerator, may be visible in a film, but the quality of the
products shown may not be explicitly praised or high-
lighted in a manner that does not correspond to everyday
communication. The precise separation here can be a
great challenge.
c) No emphasis (no. 3)
In addition, the product or service cannot be particularly
emphasized. This standard is intended to protect the
core of the principle of separation and has two protective
aims. "Firstly, it is intended to protect the freedom of the
media, as well as to maintain objectivity and neutrality of
the media with regard to competition in the market as
prerequisites for diversity of opinion in programming,
secondly it serves to protect the viewers who approach
editorial content in a more trusting manner than promo-
tional messages.“ (Rhineland-Palatinate Higher Adminis-
trative Court, 22.8.2013, Case: 2 A 10002/13.OVG).
Unlike prerequisite no. 2, emphasis does not entail ex-
plicit sales promotion by the praising of products and
services, but rather the creation of an impression of this
kind by other means. This can, for example, take place in
a street scene by means of the insertion of an advertising
panel.
Product placement must always be included in the flow of
the scene, so the product cannot be emphasized more
than is necessary for the performance of the scene. For
example, the symbolic identification of a protagonist with
the brand is not permitted because an endorsement of
this kind results in that prominent person’s reputation to
be transferred to the product or service.
2. Low-value products
In accordance with the legal definition of Section 2(2)(11)
Interstate Treaty on Broadcasting, the placement of low
value products made available free of charge cannot be
considered product placement because in any case,
there is no risk of a direct influence on the program. Oth-
erwise a legitimate financing source and opportunity for
cost savings would be removed. The difficulty is, howev-
er, in determining when the product is to be classified as
of low value. In order to prevent potential abuse, a rather
low threshold appears necessary. A relative limit of 1%
could be envisaged, or an absolute limit of EUR 1.000 (in
accordance with the ARD/ZDF Advertising Guideline of
March 12, 2010, Article 9.1).
In the determination of low value, the value of the product
or service itself is not to be used as a basis, but rather
the rental costs, because expensive items, e.g., cars or
houses, are often not purchased during the working on a
film. These costs, however, are often very difficult to
estimate as it would need to be determined which costs
would have been incurred and for what period of time if
the item had not been made available free of charge.
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 25/35
Annual Review 2014 2014
If the low value limit is not exceeded, there is still the risk
that the placement may constitute (prohibited) surrepti-
tious advertising.
3. Identification obligations
Section 7(7)(3) Interstate Treaty on Broadcasting has
now created an identification obligation for product
placement. This is intended to ensure transparency. This
can, for example, be done by means of an appropriate
caption at the beginning or end of the program.
Dr. Ulrich Reber
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 26/35
Annual Review 2014 2014
CUSTOMS LAW
Recipes – A bitter customs aftertaste?
Globalization in the confectionery industry began a long
time ago. Production no longer takes place exclusively in
Europe, but internationally. The products have for a long
time been based on their uniqueness, which relates to
"secret" recipes. If the production of the confectionery
goods or individual raw materials, for example flavorings,
is outsourced, the recipes must be passed on to the
manufacturers. In concrete terms, this means that the
German confectionery company has its products pro-
duced by a contractor, for example in Asia. In order to do
this, the company provides the Asian manufacturer with
the required recipes. The completed products are then
sent by the manufacturer back to Germany and are im-
ported and marketed in Germany.
When goods are imported from a third-party country, they
are subject to customs clearance, i.e., customs duties
must be paid on them. In order to determine import du-
ties, in accordance with the EU Customs Code, the value
of the goods are decisive. The underlying value of the
goods should be the objective value of the imported
goods, with the purchase price to be used as a basis.
The purchase price is not always everything. In accord-
ance with Article 32 Customs Code, value-increasing
components are to be taken into account in the customs
value. This includes, for example, production equipment
provided by the purchaser to the manufacturer.
What does this have to do with recipes? Contributions
include not only physical production equipment, but also
“intellectual contributions", such as expertise, sketches or
production plans. This also includes the corresponding
recipes for food items.
If the recipe is made available to a manufacturer in a
third-party country free of charge or at a reduced cost, it
must be added to the customs value. In case of intellec-
tual contributions, however, unlike contributions of physi-
cal equipment, this applies only if the development of the
formulation did not take place in the EU. This could be a
loophole for you because if you have developed the
formulation exclusively in the EU, you can provide it free
of charge to the manufacturer, without this having a neg-
ative effect on the customs value. If, however, develop-
ment work (partial performance) also took place in a
third-party country, for example in the group headquar-
ters in Switzerland, the intellectual contribution is initially
relevant with regard to customs value and would have to
be included. In case of a recipe developed partially in the
EU, a subsequent step would be to agree with the cus-
toms administration on which portion of which portion is
relevant here with regard to the customs value, also with
regard to international distribution of the completed prod-
uct.
Sven Pohl
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 27/35
Annual Review 2014 2014
New information on the capping of taxes on electrici-
ty and energy – Secure your tax relief!
The production of confection in Germany is considered
energy intensive. Legislators, however, already granted
the companies an exemption for up to 90% of electricity
and energy taxes in 1999 ("capping").
As a result of concerns based on European law against
the German exemption provisions, this had to be re-
drafted in 2012. In doing so, in particular the additional
requirement was adopted that the companies are obliged
to operate an energy management system (in general in
accordance with DIN EN ISO 50001).
The question of how this system is to be designed, how
the proof is to be submitted, and in particular how the
transition rules for 2013 and 2014 should be arranged
was regulated in more detail in mid-2013 in the Capping
Efficiency System Regulation. In the following, we would
like to briefly inform you of the current item of corre-
spondence from the German Federal Ministry of Eco-
nomics and Technology, as well as the draft amendment
of the Capping Efficiency System Regulation:
1. Federal Ministry of Economics and Technology
correspondence
In circular letter dated October 30, 2014, the Federal
Ministry of Economics and Technology clarified that proof
of the introduction of the energy management system,
contrary to previous statements, can still be submitted for
the application year 2013 in 2014. In this case, the in-
spection by the certifying body, however, will not be per-
formed on-site but rather based on documents. For the
applicants this also means that they must submit an
affirmation in lieu of oath along with the application for
capping. This affirmation has to confirm that the require-
ments had already been met in application year 2013.
For application year 2014, the proof of the introduction of
the system, on the other hand, must be submitted to the
certifying body by the end of the application year, and the
on-site inspection must also be performed in 2014. If this
has occurred, the issuing of proof by the authority can
take place even after the end of the application year.
2. Capping Efficiency System Regulation1 Draft
Amendment
The previous Capping Efficiency System Regulation
included in some areas included unclear provisions in
some areas, which in practice have repeatedly led to
uncertainty in different administrative practices. the
change is intended to clarify the requirements and there-
fore ensure uniform application. In addition, for small and
medium-sized businesses, the provisions have been
eased to make the provision of proof easier, for example
it should be it will be sufficient if 95% of the total energy
consumption is recorded.
Sven Pohl
1 Draft of the Federal Ministry for Economics and Energy on a Regulation for the Amendment of the Capping Efficiency System Regulation of September 10, 2014
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 28/35
Annual Review 2014 2014
COMMERCIAL AND DISTRIBUTION LAW
For activities in other countries: Be cautious about
the agreement on legal venue or arbitration!
Confectionery manufacturers sourcing products such as
cocoa or cane sugar from outside Europe or distribute
goods there, should ensure that the provisions on juris-
diction in their contracts fulfill the special requirements of
these circumstances. Relatively often, sales or distribu-
tion contracts provide without much reflection that the
domestic courts should decide any dispute. If accepted
by the contractual partner, it even appears to be a small
negotiating victory. In fact, this can be a battle that is not
worth winning, however, because while in the EU, judg-
ments are recognized by both sides, this is far from true
beyond the European borders. A German decision, for
example, cannot be executed in many African States or
in the Middle East, or even in Russia. If a dispute occurs,
the question arises of whether it actually makes sense
then to make a complaint at all. There are often good
reasons not to agree to a legal venue at the headquar-
ters of the contractual partner because the rule of law in
the relevant country is not fully developed. In such cases,
arbitration can provide a way out. Boards of arbitration
are privately organized courts, for example, by the Inter-
national Chamber of Commerce (ICC).
An important advantage of arbitration is the global en-
forceability of judgments ("arbitral awards"), which may
be issued by these boards of arbitration. More than 150
States have entered into an agreement obliging them to
accept foreign arbitral awards and to permit their en-
forcement. A board of arbitration, however, has respon-
sibility only if the parties have agreed to this. Since an
agreement of this kind is usually no longer possible after
a dispute has arisen, it should be considered when con-
tracts are being entered into with suppliers, customers, or
distribution partners (in particular those outside Europe)
whether or not an arbitration clause should be included.
Practical tip:
Do not draft an arbitration agreement without profession-
al support or use an “official” clause template by a recog-
nized arbitration institution. In practice, it must be ob-
served that a significant portion of arbitration agreements
is defective because the responsible board of arbitration
is appointed in an ambiguous manner. This can result in
errors that cannot be rectified at a later time.
Oliver Korte
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 29/35
Annual Review 2014 2014
ANTITRUST LAW
The German Federal Cartel Office intensifies its in-
vestigation activities
1. Introduction
Antitrust law as a law for large corporations - those times
are long gone. For some time now, the Federal Cartel
Office has also been investigating the area of medium
size companies with regard to uncovering anticompetitive
agreements and conduct. The significant fines that have
been imposed recently against medium-size companies
send a clear message.1 In this respect, it is also essential
for the management of a medium-sized company to keep
an eye on antitrust law for example with regard to ex-
changing information with competitors, entering into
collaborations, and the structuring of sales channels.
This article therefore illustrates the main requirements of
antitrust law and some cases that have affected compa-
nies in the confectionery industry in the past. The focus
here is on the area covered by Section 1 German Act
against Restraints of Competition/Article 101 TFEU,
which prohibits anticompetitive agreements and conduct.
2. The cartel prohibition under Section 1 Act
against Restraints of Competition
In accordance with Section 1 Act against Restraints of
Competition, agreements between companies, resolu-
tions by associations of undertakings, and concerted
practices, which are aimed at or bring about a preven-
tion, limitation, or distortion of competition are prohibited.
1 See for example the total of EUR 338 million of fines imposed by the Federal Cartel Office to some 20 companies, which were part of the "sausage cartel", Federal Cartel Office Press Release of July 15, 2014.
This covers in the broadest sense agreements or con-
certed practices between competitors, i.e. companies at
the same level in the market ("horizontal agreements"),
as well as agreements between companies at different
levels in the market, i.e. for example between manufac-
turers and distributors ("vertical agreements”).
With regard to the applicability of the cartel prohibition,
the first thing that is required is the presence of an
agreement for concerted practices. The term "agree-
ment" is to be interpreted broadly. In addition to contracts
in the literal sense, “gentlemen’s agreements” are also
included, i.e. agreements that create an obligation be-
tween the parties with regard to their market conduct,
including such that do not rise to having a binding effect
under civil law.2 All that is necessary for an agreement to
be considered to exist is an actual binding effect and an
intention aimed at this. This does not include in particular
unilateral measures, for example, recommendations.
An agreement contrary to antitrust law is the same as
"concerted practices". The case law defines concerted
practices conduct as "a form of coordination between
companies … that may not have reached the level of the
conclusion of an agreement in the actual sense, but that
replaces competition, which is associated with risks, with
a practical cooperation. Concerted practices therefore by
their very nature do not meet all of the factual require-
ments for an agreement, but can also result in particular
from coordination manifesting itself in the conduct of the
participants.“3
2 ECJ, 15.7.1970 – C-41/69 [1970], 661, paragraph 112 – ACF Chemiefirma; General Court, 06.04.1995 – T-141/89 [1995], II-791, paragraph 95 – Tréfileurope; Immenga/Mestmäcker, Wettbewerbsrecht GWB [Competition Law Act against Restraints of Competition], 4th ed., 2007, Section 1 margin notes 83 et seqq. 3 ECJ, 14.7.1972 – C-48/69 [1972], 619, paragraphs 64, 67 – ICI.
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 30/35
Annual Review 2014 2014
A resolution by an association of undertakings that is
followed by a company and therefore can be considered
"concerted" can also be sufficient.4
In addition, in accordance with Section 1 Act against
Restraints of Competition, it is also necessary that the
agreement or concerted practices aims at or brings about
a restriction of competition between companies that are
independent of each other. A restriction on competition
means limitation of competitive freedom of action as a
provider or consumer. For companies within a group of
companies, an intra-group exemption will apply. Re-
strictions on competition within groups of companies are
not relevant under antitrust law. Parameters relevant to
competition must be affected by the agree-
ment/coordination that is contrary to antitrust law, for
example sales, prices, consumers, territories, product
range, invitations to tender, etc. This is the area where
the “hardcore cartels" occur, i.e. in particular in the area
of price, territory, and quotae agreements. This type of
cartel agreement has a particularly damaging effect on
competition and penalties are imposed accordingly..5
Of particular practical importance and less obvious, for
example, are market information systems. Market infor-
mation systems cause concerns under antitrust law if
they include an agreement between companies to ex-
change information that is relevant to competition, which
would otherwise be kept confidential, between the partic-
ipants, whether this takes place directly or via a third
party.6 A benchmarking system that is operated by an
industry association for members can also result in a
4 Federal Court of Justice, 14.82008 – KVR 54/07 - WuW/E 2408, 2415 – Lottoblock. 5 cf. most recently Press Releases of the Federal Cartel Office of January 13, 2014 and April 2, 2014 (beer cartel) and July 15, .2014 (sausage cartel). 6 Federal Court of Justice, 29.1.1975 – KRB 4/74 – WuW/E 1337, 1342 – Aluminum – Semi-finished products; Federal Court of Justice, 18.11.1986 – KVR 1/86 – WuW/E 2313, 2315 – Baumarkt-Statistik; Im-menga/Mestmäcker, loc.cit., Section 1, margin notes 303 et seqq.
restriction on competition in the form of unpermitted dis-
closure of confidential information ("hidden competition").
A differentiation must be made in this respect between
"identifying" and "non-identifying" procedures. Identifying
procedures are those in which individual transactions
between the competitors are disclosed. Since this affects
the core of hidden competition, Section 1 Act against
Restraints of Competition may be breached. In contrast,
"non-identifying procedures" are those in which it is not
possible which is not possible to draw an inference about
individual business transactions and are therefore not
objectionable under antitrust law.7
Finally, the agreement or concerted practices must have
a noticeable external effect. This does not include
agreements that result in only an insignificant external
effect. The agreement must therefore be of a kind that
would lead to a noticeable, practically significant change
in market conditions.8 In order to make this more con-
crete, following the 2001 "de-minimis" notification by the
Commission,9 the Federal Cartel Office also issued a de-
minimis notification in 2007. According to both notifica-
tions, the authorities will generally not initiate proceed-
ings against parties to an agreement that may be that
may be anticompetitive if, in case of horizontal agree-
ments, the market share of the companies involved does
not exceed 10%. In case of vertical agreements, the
threshold is 15%. If there are "network effects" in place,
i.e. parallel contracts, the market share threshold is 5%.
However, the notifications do not apply to intentional
anticompetitive restrictions on competition, i.e. in case of
hard-core cartels such as price, quota, or territory
agreements. These can be pursued irrespective of
7 Bechtold, loc.cit., Section 1 margin note 34 with additional references 8Federal Court of Justice, 23.2.1988 – KRB 4/87 – WuW/E 2469, 2470 – Eyeglass frames; Federal Court of Justice, 13.1.1998 – KVR 40/96 WuW/DE-R 115 – Car Partner. 9 European Commission, 22.12.2001 – 2001/C-368/07 – OJ EC 2001 C-368/13; the Commission published a new version of the de-minimis notification on June 26, 2014, the content of which is largely the same, cf. European Commission C(2014)4136 final.
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 31/35
Annual Review 2014 2014
whether the aforementioned thresholds have been
reached. In case of vertical agreements, the market
share thresholds do not apply in every case. Rather, in
the case of resale price maintenance, restrictions on
sales territories, division of customers, or limitations on
active or passive sales to end customers, the de-minimis
notification is inapplicable and the affected companies
cannot refer to the fact that the actions are not noticea-
ble.10
Anticompetitive agreements can in principle occur at two
levels, on the one hand at the horizontal level and on the
other hand at the vertical level.
Horizontal relationships relate to companies that are
active in the same market and at the same level in the
market. These are therefore agreements between current
and potential competitors.
Vertical relationships affect companies at different levels
in the value creation chain, in particular therefore manu-
facturers, wholesalers, retailers.11
In general agreements
in the horizontal relationship are considered as critical,
while agreements in the vertical relationship can also
have the effect of promoting competition.
10 cf. Article 4 Commission Regulation (EU) No 330/2010 of 20 April 2010, OJ EC 2010 L 102/1 ("Vertical Blocks Exemption Regulation“). 11 cf. for example Düsseldorf Higher Regional Court, 13.11.2013 – VI-4 (Kart) 11/13 – WuW/DE-R 4118 - Bathroom fittings
Most "hardcore cartels" have originated in horizontal
relationships. While cartel agreements of this kind are
generally seen as damaging and therefore no exemption
in accordance with Section 2 Act against Restraints of
Competition (or Article 101(3) TFEU) can be considered,
there are forms of horizontal cooperation between com-
panies that are to be considered in a different way This
includes cooperation in the area of research and devel-
opment, “specialization agreements”, or non-compete
agreements in the context of corporate acquisition con-
tracts.
Vertical agreements include agreements hat are entered
into by companies that are not active at the same market
level. In practice, these are mostly distribution systems
that have been set up by the manufacturer of a certain
product and that then are binding on the companies in
the subsequent stages of the market (wholesaler, retail-
ers). Such distribution systems – and other vertical
agreements – often have the effect of promoting competi-
tion because they result in a more efficient distribution of
goods in the relevant markets, which is why an exemp-
tion is more often considered in this area. A differentia-
tion is to be made here between simple distribution sys-
tems and selective distribution systems. In case of the
latter, the manufacturer selects distributors for a given
product in accordance with certain criteria. Here, it is
regularly assumed that a restriction on competition does
not exist or is outweighed by the procompetitive effects of
such an arrangement. A prerequisite here, however, is
that a selective distribution system is indeed necessary
for the type of product in question and that the sysftem is
fully and coherently implemented.12
12Karlsruhe Higher Regional Court, 25.11.2009 – 6 U 47/08 Kart. – WuW/DE-R 2789 – School backpacks; cf. also Federal Cartel Office, Case report of 27.5.2014 – B 2 – 52/14.
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 32/35
Annual Review 2014 2014
Vertical agreements are also, however, subject to re-
strictions under antitrust law. In particular if a vertical
agreement contains so-called "core restrictions",13
it is to
be assumed that it is contrary to antitrust law, which
results in corresponding penalties, including fines.
The restrictions prohibited in distribution contracts in-
clude, without taking into consideration market share
thresholds:
- Resale price maintenance agreements
This is a contractual obligation, whether it be direct or
indirect, according to which the manufacturer sets,
the prices at which the acquired goods can be sold on
to the next level by a wholesaler/retailer. In contrast,
nonbinding price recommendations are not consid-
ered harmful under antitrust law, as long as they are
actually nonbinding and are not made virtually binding
through the exercise of pressure. The same applies in
principle to “maximum price agreements", i.e. cases
in which the purchaser enters into a contractual
agreement with the supplier that it will not sell the
goods to customers above a certain price limit. Maxi-
mum price agreements of this kind are permitted un-
der antitrust law in principle, Article 4(a) Vertical Block
Exemption Regulation.
13cf. Article 4 of Commission Regulation (EU) No 330/2010 of April 20, 2010 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of vertical agreements and concert-ed practices, OJ L 102/1 ("Vertical Block Exemption Regulation“).
- Restrictions on sales territories
In principle, the supplier is allowed to deliver beyond
its sales territory. Exceptions exist under Article 4(b)
of the Vertical Block Exemption Regulation. However,
these apply in particular for the restriction on "active
sales" outside of the distributor’s own sales territory
to customer groups that the manufacturer/wholesaler
has reserved for itself or has assigned to another
contractual partner. “Active sales” refers to active
promotion to customers or maintaining distribution
centers in territories that are assigned to another dis-
tributor. A restriction on purely reactive, i.e. passive,
sales to respond to inquiries from customers from
other sales territories, however, is impermissible. In
addition, according to Article 4(b)(iii) Vertical Block
Exemption Regulation, it is also permitted to prohibit
suppliers operating within the selective sales system
from supplying traders who do not belong to the se-
lective sales system.
- Restriction on sales to end consumers
Any limitation on sales to end consumers, whether
active or passive, is not permitted. This also applies
within a selective distribution system, Article 4(c)
Vertical Block Exemption Regulation.
If clauses of this kind are included in sales agreements,
the contractual parties cannot rely on an exemption by
way of the Vertical Block Exemption Regulation. Accord-
ingly, Section 1 Act against Restraints of Competi-
tion/Article 101 TFEU apply without restrictions. As a
result of the fact that the possibility of an individual ex-
emption in accordance with Section 2 Act against Re-
straints of Competition or Article 101(3) TFEU is not
generally considered, it should be presumed that the
corresponding clauses are contrary to antitrust law.
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 33/35
Annual Review 2014 2014
3. Practical examples
Companies in the confectionery industry – with the ex-
ception of sugar manufacturers – have not yet been at
the center of investigation activities by the Federal Cartel
Office. As stated in the introduction, the focus of the
Federal Cartel Office in the past few years has shifted
significantly, however, in the direction of increased pros-
ecution of cartels. In particular, the grocery industry has
come under scrutiny here. In 2013 and 2014, the follow-
ing proceedings stood out in particular:
3.1 Price agreements and anticompetitive exchange
of information: Chocolate cartel
In 2013, the Federal Cartel Office imposed fines against
brand manufacturers of chocolate products totaling EUR
63 million. This was the result of a bonus application –
also referred to as an leniency notice – by Mars GmbH,
which remained fully exempt from punishment in this
way.14
In detail, three different situations were pursued
and fines were imposed: First of all price fixing agree-
ments between the manufacturers of the "Ritter Sport“
chocolate bars and "Milka“. Secondly, price fixing agree-
ments, as well as anticompetitive exchange of infor-
mation, between manufacturers of confectionery, and –
thirdly – anticompetitive exchange of information be-
tween different confectionery manufacturers within a
working group of the Association of the German Confec-
tionery Industry.15
14 Bonus applications provide protection from fines, not, however, from private claims for damages. 15
On the whole cf. Federal Cartel Office, Case report of May 27, 2013.
The price fixing agreements with regard to Ritter Sport or
Milka were made in such a way that those responsible at
the two companies agreed by telephone to pass on in-
creased sales prices in a coordinated way to end con-
sumers. Alfred Ritter GmbH & Co. KG in turn brought this
situation to the attention of the cartel authorities within a
bonus application and therefore did not incur a penalty.
The second situation related to a discussion group be-
tween high-level sales employees of leading confection-
ery manufacturers. Here too, price increases were coor-
dinated for chocolate products, partially also through the
coordinated reduction in package content. In addition,
information that was sensitive with regard to competition,
on the status and progress of negotiations with various
large retailers was exchanged.
The third set of circumstances related to an exchange of
information in a working groups within the Association of
the German Confectionery Industry. During the meetings
of this working group, according to the findings of the
Federal Cartel Office, information was exchanged on
negotiations with the retail grocery trade at annual meet-
ings on conditions and special requirements, as well as
on intended increases in the list prices. This situation is
of particular practical significance, because the fact that
price agreements are contrary to antitrust law has now
become widely known. Companies and associations of
undertakings, however, are less aware of the topic of the
potential antitrust risks associated with an exchange of
information. Association meetings in particular are a
forum that is vulnerable to this.
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 34/35
Annual Review 2014 2014
3.2 Territory and quota agreements: Sugar cartel
By a fine decision of February 18, 2014, the Federal
Cartel Office imposed fines totaling EUR 280 million on
leading sugar manufacturers for anticompetitive territory,
quota, and price agreements. According to the findings,16
the manufacturers had reached an agreement that they
would restrict themselves mainly to the sales territories
from which they originate, and therefore not to compete
with each other and to export any excess production to
other countries and not to sell them on the domestic
market. The territory agreement was secured by price
and quantity measures were entered into domestically,
as well as measures for the control of imports and ex-
ports. Quota reductions that were caused by changes in
EU requirements were coordinated between the compa-
nies.17
Dr. Sebastian Graf von Wallwitz LL.M.
16 Here as well, a company that was part of the cartel, Nordzucker AG, had filed a bonus application and therefore obtained a far-reaching fine waiver. 17
cf. Press Release Federal Cartel Office of February 18, 2014.
DECEMBER 2014
Confectionery Industry Special
Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law
Page 35/35
Annual Review 2014 2014
Practice Group Industrial Property / Competition Law Dr. Dorothee Altenburg1 Nikolaus Bertermann2 Dr. Claudia Böckmann1 Dr. Markus Brock1 Dr. Ilja Czernik Georg Delhaes Markus von Fuchs, LL.M.
1
Dr. Thomas Haug Dr. Philipp Heigl Dr. Johann Heyde Dr. Magnus Hirsch1
Dr. Oliver Hornung Margret Knitter, LL.M.1 Stefan Kridlo Christoph Mayerhöffer Dr. Karolin Nelles, LL.M. Dr. Andreas Peschel-Mehner Stephanie Pfaff Marc Pussar Yvonne Schäfer Stefan C. Schicker, LL.M.
1 2 3
Dr. Konstantin Wegner, LL.M.
Practice Group IT & Digital Business
Nikolaus Bertermann
2
Jens Borchardt, LL.M. Dr. ‚Markus Brock1
Dr. Oliver M. Bühr2, 6 Clemens Burgenmeister Dr. Thomas Haug, LL.M. Dr. Philipp Heigl, LL.M. Florian Hensel Dr. Johann Heyde Dr. Oliver Hornung Dr. Wulf Kamlah René M. Kieselmann Franziska Ladiges Daniel Meßmer
Dr. Karolin Nelles, LL.M. Elisabeth Noltenius, LL.M. Dr. Matthias Nordmann, M.A.5 Dr. Matthias Orthwein, LL.M. Dr. Andreas Peschel-Mehner Daniel Pfeier
2
Sven Preiss, LL.M. Stefan C. Schicker, LL.M.
1, 2, 3
Jan Schneider2 Martin Schweinoch
2
Benjamin Spies Julian Westpfahl2 Dr. Hans Markus Wulf
2
Dr. Anne Zoll
Practice Group Media and Entertainment Law
Dr. Dorothee Altenburg
1
Jens Borchardt, LL.M. Hanna Bickel, LL.M. Dr. Ilja Czernik Dr. Ulrich Fuchs Dr. Christoph Haesner, M.C.L Fabian Hartmann Florian Hensel Dr. Johann Heyde Dr. Magnus Hirsch1 Dr. Bernd Joch Norbert Klingner Stefan Kridlo
Dr. Eberhard Kromer, MBA5
Christoph Mayerhöffer Dr. Karolin Nelles, LL.M. Elisabeth Noltenius, LL.M. Pia Odefey Dr. Andreas Peschel-Mehner Sven Preiss, LL.M. Dr. Ulrich Reber Prof. Dr. Mathias Schwarz Georg Wallraf Dr. Konstantin Wegner, LL.M. Dr. Anne Zoll
Practice Group Commercial Law and Distribution Law
Dr. Philipp Asbach Dr. Michael Brauch Dr. Oliver M. Bühr2, 6
Dr. Ilja Czernik Klaus Kelwing Oliver Korte5
Sabine Kröger5
Christine Lingenfelser, LL.M.
Caroline Lorenz Dr. Ulrich Muth
4
Dr. Kolja Petrovicki, LL.M. (UPenn) Sven Pohl Andreas Seidel Dr. Jürgen Sparr, LL.M. Dr. Sebastian Graf von Wallwitz, LL.M.
5
Dr. Josef Zeller5
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 Lawyer and Civil Law Notary
Legal Notice SKW Schwarz Rechtsanwälte Steuerberater Wirtschaftsprüfer Partnerschaft mbB Munich Local Court, PR 884 Editorial Department: Margret Knitter, LL.M. Email: [email protected]
Offices 10719 Berlin Neues Kranzler Eck/Kurfürstendamm 21 T +49 (0) 30.889 26 50-0 F +49 (0) 30.889 26 50-10 40212 Düsseldorf Steinstraße 1/Kö T +49 (0) 221.82 89 59-0 F +49 (0) 221.82 89 59-60 20095 Hamburg Ferdinandstraße 3 T +49 (0) 40.33 40 10 F +49 (0) 40.33 40 15 21
60598 Frankfurt/Main Mörfelder Landstraße 117 T +49 (0) 69.63 00 01-0 F +49 (0) 69.63 55 22 80333 Munich Wittelsbacherplatz 1 T +49 (0) 89.286 40-0 F +49 (0) 89.280 94-32
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 Tele-media Act.
© SKW Schwarz 2015