Press release of June 11, 2012
On May 31, 2012, the German Federal Supreme Court dismissed an appeal on points of law filed by the claimant, the German wine producer “Fürstlich Castell’sches Domänenamt Albrecht Fürst zu Castell-Castell” domiciled in the community of Castell, located in the wine-growing area of Franconia (part of Bavaria), against a decision of the Frankfurt Appeal Court, denying liability of the French company Castel Frères of Bordeaux for alleged infringement of trade name and trademark rights by using the designation “CASTEL”. As a consequence, Castel Frères is allowed to use its own trade name in Germany as well as the trademark “CASTEL”.
BARDEHLE PAGENBERG acted on behalf of the French defendant, one of the largest wine producers and merchants worldwide.
As regards a trademark registration held by Castel Frères showing the word “Castel” on a label the Supreme Court revoked the rights on grounds of non-use, considering that the use of the word “CASTEL” was not sufficient.
The Frankfurt Appeal Court had denied infringement (see press release of May 27, 2010) and held that the claimant’s name will not, in the public’s perception, be reduced to “CASTELL”. The Court also denied infringement of the German trademarks “Schloß Castell” and “CASTELL-CASTELL”.
The conflict between the Germany company and the French company is continuing in other fora – cases are pending in Munich and Frankfurt before the civil courts, before the German Patent and Trademark Office and the German Federal Patent Court, where the German company’s German trademarks are sought to be declared invalid, and before the General Court of the European Union, where the German company is seeking the invalidity of the French company Community trademark “CASTEL”.
Legal representatives of Castel Frères SAS:
Attorney-at-Law admitted to the Federal Supreme Court: Cornelie von Gierke
Legal representatives of Fürstlich Castell’sches Domänenamt Albrecht Fürst zu Castell-Castell
Wuesthoff & Wuesthoff (Munich): Roland Kunze, LL.M. (Attorney-at-Law)
Attorney-at-Law admitted to the Federal Supreme Court: Dr. Reiner Hall
Federal Supreme Court (First Civil Senate)
Professor Dr. Joachim Bornkamm (Presiding Judge)