In January 2012, the Cologne Appeal Court, in summary proceedings, had dismissed claims of August Storck KG, Berlin, asserted against Stollwerck GmbH, Cologne, on the grounds of German unfair competition law for distributing chocolate products under the brand “Reichardt”. On February 20, 2015, the very same Appeal Court confirmed the grant of such claims in proceedings on the merits – based primarily on consumer survey evidence submitted by the expert appointed by the court of first instance.

The conflicting products involved are represented below:

        
                        Storck's product                                                Accused product


In accordance with the findings of the Cologne District Court, the Cologne Appeal Court held that the original “merci” product could claim “high competitive individuality” (a standard similar to the enhanced distinctiveness test under German and European trademark law). Such individuality was not diluted over the years – the original product has been on the German market since 1965 and its outer appearance only slightly modified since the year 2000 – as competing products were different in their respective shape and/or colours.

The Appeal Court also sided with the lower instance in finding that the accused product was imitating the original product. Both products showed nearly identical dimensions including bevelled lateral edges with two of the four side portions showing the inscription “8 varieties of chocolate specialities”. Both products also showed a perforated opening mechanism and were wrapped in transparent packaging foil. In terms of colour, both products basically used the colour white supported by red and gold and, in particular, a representation of the single chocolate bars in front of a red rectangle with a slim golden stripe.

Moreover, the appearance of the accused products suggested that the single bars were arranged and wrapped the same way as in case of the original product, using different colours for indicating the various flavours of each single bar. These flavours were identical to the original’s flavours (with one exception), using identical or highly similar description for each flavour. Likewise, the product claim (“finest varieties” versus “finest selection”) was similar, using a similar script.

Turning to the issue of whether there was a sufficient – direct or indirect – likelihood of confusion as required for the application of Section 4 No. 9 lit a German Act against Unfair Competition, the Cologne Appeal Court found that the deviating product indications “merci” (original product) and “Reichardt” (accused product) did not avoid such indirect confusion, leading to the public’s assumption, based on its imperfect recollection and notwithstanding existing differences, that the accused product was either marketed (as a sub-brand) or licensed by the claimant.

Interestingly, as already indicated, the Cologne Appeal Court changed its mind in this respect, accepting that the survey expert appointed by the Cologne District Court demonstrated that more than 30 % of the public addressed associated the accused product with the claimant (either stemming from or being licenced by the claimant). Such degree of attribution, according to the Court, was sufficient. The fact that the accused product was even more expensive than the original – another unique detail of the case – did not proved these findings wrong, according to the Appeal Court. Firstly, perception as a sub-brand would not automatically qualify the product as low-grade or inferior. Secondly, the difference in price was not significant enough.

Remarks

This decision, which is final, is remarkable in several respects: It shows that courts are – as they should be – prepared to re-consider prior findings in preliminary proceedings on the grounds of new facts and evidence. It also demonstrates and reinforces a rather owner-friendly approach of, in particular, the Cologne Appeal Court taken in matters of trade dress and trademark protection (see, as regards claims for infringement of a shape mark, BARDEHLE PAGENBERG IP Report 2015/I).

Whether the evidenced degree of attribution of “more than 30 %” will turn out to be the final word must be seen. Certainly, more than 30 % is “significant” or, in any event, “not insignificant”.

For the time being, and to our knowledge, there is no case law from other German authorities, including the German Federal Supreme Court, which would prove the decision at hand either correct or wrong. Finally, the case is a good example of the risks taken by “me-too” products that seek not to copy but in any event to imitate the basic features of the product of the market leader.

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