Press release of May 27, 2010
In the first instance, the German claimant “Fürstlich Castell’sches Domänenamt Albrecht Fürst zu Castell-Castell” had been successful in preventing the defendant from distributing wines under the designation “Castel” in Germany (Frankfurt District Court, decision of October 30, 2008).
With its decision of May 27, 2010, (Decision of May 27, 2010 – 6 U 243/08 – Castel) the Frankfurt Appeal Court mainly confirmed the appeal and in essence concluded that the word mark “Castell” does not dominate the company name of the claimant. In particular, “Castell” was not used as a keyword of the company name or in an isolated position. The decisive point in time had been before 1966, because the defendant held rights to “Castel” in terms of a figurative mark protected in Germany since 1966, which in both instances was deemed to be genuinely used and, thus, valid. Moreover, “Castell” was not deemed to be distinctive on its own, there being a wine growing community of that name in the region of Franken where the claimant is domiciled.
In consequence, the solely relevant, full company name “Fürstlich Castell’sches Domänenamt Albrecht Fürst zu Castell-Castell” was not deemed to be sufficiently similar in comparison to the accused mark “Castel”. Therefore, the Frankfurt Appeal Court denied any sufficient likelihood of confusion on the part of the consumers. In addition to that, claims based on trademark law were dismissed for lack of priority.
The case was not admitted for revision. It remains to be seen whether the claimant will appeal this and whether the Federal Supreme Court admits this appeal. Only then would the Federal Supreme Court have the opportunity to review the decision of the Frankfurt Appeal Court. Attorneys of Bardehle Pagenberg successfully represented Castel Frères S.A. before the Frankfurt Appeal Court and the Frankfurt District Court.
Legal Representatives Castel Frères S.A.:
BARDEHLE PAGENBERG (München):
Dr. Henning Hartwig (Attorney-at-Law, Partner),
Dr. Alexander von Mühlendahl (Attorney-at-Law)
Legal Representatives Fürstlich Castell’sches Domänenamt Albrecht Fürst zu Castell-Castell:
Wuesthoff & Wuesthoff (München): Roland Kunze ((Attorney-at-Law, Partner)
Frankfurt District Court, 3. Civil Chamber:
Dr. Regine Zöller-Mirbach (Presiding Judge)
Frankfurt Appeal Court, 6. Senate:
Roland Vorbusch (Presiding Judge)