For several years now, Lubberger Lehment has been representing the honey manufacturer LieBee GmbH in an ongoing dispute with the jam manufacturer Göbber GmbH. The subject of dispute is the allegation of an unfair imitation, which the manufacturer of GLÜCK jam sees in LieBee honey. Lubberger Lehment have already been able to defend LieBee successfully against attacks on a second and third product design (see District Court of Hamburg, judgment of 20 January 2022, case ref. 327 O 44/21, final and binding). With the GLÜCK decision of the Federal Supreme Court of 7 December 2023, case ref. I ZR 48/22, the decision of the Higher Regional Court of Hamburg regarding the first LieBee product design has been overturned. The Higher Regional Court of Hamburg had found the honey jar to be an unfair imitation of GLÜCK jam in the form of indirect deception of origin (mittelbare Herkunftstäuschung). Now the Higher Regional Court of Hamburg has to decide once more.

The decision of the Federal Supreme Court contains new and fundamental guidelines for protection against unfair imitation:

– The German law on unfair imitation does not provide for protection of specific concepts for product designations. The subject matter of protection is the specific design of a product, not the idea behind it.

– The fact that differing product and manufacturer information on products of daily use can rule out a deception about the commercial origin is also applicable in cases in which the design of the packaging clearly stands out from the market environment.

– Product names can have the same effect of indicating origin as clearly recognizable manufacturer names.

– Unfair imitation is not ruled out by the products at issue being different. However, such a difference leads to special requirements for the unfairness criterion, due to the fact that certain categories of indirect deception of origin (deception about a secondary trademark (Zweitmarkenirrtum)) are not applicable to non-identical products.

Our client LieBee GmbH was represented in the proceedings by our Berlin partners Dr. Andreas Lubberger and Eva Maierski. Axel Rinkler represented our client before the Federal Supreme Court.

Here you can find the JUVE press release.

Online sales environments may also be detrimental to the luxury image: Higher Regional Court of Dusseldorf confirms sales ban of Issey Miyake and Shiseido products on real.de.

Ban on distribution of luxury brands on online-platform real.de confirmed: After a long-standing dispute, Shiseido Germany GmbH have achieved a significant success in their fight against grey market products. In 2022, the District Court of Dusseldorf found that the presentation of Shiseido and Issey Miyake products on the real.de website harmed the luxury image of these cosmetic and perfume brands and is therefore not permitted. Upon Real’s appeal, the Higher Regional Court has now confirmed the luxury image of the Shiseido and Issey Miyake brands, as well as the detrimental sales environment of the discounter online platform real.de.

The court particularly pointed out that also in the online world, diverse sales experiences are possible and appreciated by the consumer; as well as online shops which lack any prestigious character, there are also online shops with various levels of prestigious character. According to the Court, the presentation of Issey Miyake and Shiseido products in the usual, functional and non-prestigious way that is typical for the discounter platform real.de is therefore damaging to the images of the brands and thus infringes the respective trademarks.

We consider this decision to be a remarkable success for the owners of luxury and prestigious brands since it extends the case law on prestige-damaging sales environments in retail stores in the online world. Congratulations to our Berlin colleagues Eva Maierski, Dr. Rani Mallick and Luca Kowalewski who represented our client in this case.

The press release can be found here.

Lubberger Lehment has been involved in a series of disputes with the discounters ALDI Süd and ALDI Nord on behalf of its client Coty for the past six years. The issue in dispute dealt with the question of whether Coty was entitled to prohibit the discounters from selling Coty’s Calvin Klein and Joop! brand fragrances based on the discounter – and, from Coty’s point of view, prestige-damaging – sales environment at ALDI. This long-running dispute has now come to a successful end for Coty – with two remarkable court decisions:- In the first decision dated July 27, 2023, the German Federal Supreme Court dismissed another non-admission appeal [Nichtzulassungsbeschwerde] by ALDI against a ruling by the Higher Regional Court of Berlin [Kammergericht]. The Berlin ruling prohibited Aldi Nord from selling Calvin Klein perfumes in the typical ALDI rummage boxes.

– Secondly, in its decision dated June 30, 2023, the Higher Regional Court of Dusseldorf ruled in favour of Coty and prohibited the presentation of perfumes in the rummage boxes typical of Aldi and in glass display cases in all Aldi Süd stores. Aldi decided against a non-admission appeal [Nichtzulassungsbeschwerde] against the ruling of the Higher Regional Court of Dusseldorf, thus rendering the decision final and binding.

As a result, Coty has successfully defended itself before three higher courts, with one case partially confirmed by the German Federal Supreme Court, against the distribution of its Joop! and Calvin Klein perfumes in ALDI stores and the typical discounter sales environment there.

We consider the decisions to be not only a great success for Coty, but also a real ray of hope for many rights holders: they affirm that rights holders do not have to accept a sales environment for their branded goods that is incompatible with the brand image they have painstakingly built up. They also show that the possibility of taking action against prestige-damaging sales environments on the basis of trademark infringement is not per se reserved for brands which fall in the top luxury category.

The proceedings were conducted for our client Coty by our Berlin partners Eva Maierski and Dr. Rani Mallick.

Our colleagues Dr. Rani Mallick and Eva Maierski achieved a great success for our client Shiseido against the real.de platform. Shiseido had filed two complaints against Real seeking injunctions concerning the sale of its SHISEIDO and ISSEY MIYAKE perfume and cosmetic products on the real.de platform.

In both cases the District Court of Düsseldorf (decisions of 29 September 2022, case nos. 37 O 183/19 and 37 O 177/19) held that SHISEIDO and ISSEY MIYAKE are luxury brands that have a prestige image. Selling products of those brands on the platform real.de, which features a discounter-like sales environment, impairs the prestige image of those trademarks. Therefore, Shiseido has legitimate reasons to oppose further sale and distribution of the products pursuant to Art. 15 (2) EUTMR, preventing Real to rely on the principle of exhaustion.

The decisions are not yet final and binding.

The Regional Court in Stuttgart held that the sale of “Joop” and “Calvin Klein” perfumes in Aldi supermarkets is detrimental to the prestigious character of the brands and therefore infringes Coty’s trademark rights. The court’s decision is based on the sales environment in which the products are offered in the Aldi supermarkets. With the decision, the Regional Court (case ref. 2 U 321/20) has confirmed the decision of the court of first instance. We congratulate our Berlin partners Eva Maierski and Dr. Rani Mallick on this success. The JUVE press release can be found here.

Our colleagues Dr. Rani Mallick and Eva Maierski have published an article in the “World Trademark Review Yearbook: A global guide for practitioners 2021/2022” in which they discuss the benefits of registered design protection compared to other IP rights as well as design-protection strategies. The article can be downloaded here:

The economic value of designs_WTR Yearbook 2021-2022

This article first appeared in World Trademark Review Yearbook: A global guide for practitioners 2021/2022, a supplement to World Trademark Review, published by Law Business Research – IP Division. To view the guide in full, please go to www.WorldTrademarkReview.com.

Our colleague Eva Maierski has co-authored the German, EU and WIPO parts of a comparative study on design rights that has recently been published as a special edition of “les Nouvelles” by the Licensing Executives Society International (LESI). The study provides an overview of design protection and discusses enforcement strategies. The full issue is available on the LESI website (only available to LESI members).

Coty distributes high quality fine fragrances through a selective distribution system. The admissibility of the selective distribution system was recently confirmed by the noteworthy “Akzente” ruling of the European Court of Justice (judgement of 6 December 2017, C-230/16). The findings of this judgement are already bearing fruit:Lubberger Lehment has assisted Coty to successfully defend themselves against the distribution of their luxury perfumes in the branches of the discounter Aldi. The Appeal Court in Berlin (decision of 11 May 2018, Ref.: 5 W 97/18) ruled that Coty was right that the product presentation in a typical discounter sales environment affected the prestige value of the brand concerned. The prominent offer of the branded perfumes in the context of special sales campaigns does not change this assessment. Coty can oppose this form of resale. “If the defendant (…) also wants to gain an image boost as a discounter by offering inexpensive special sales of luxury products, it is obliged (…) to take special consideration. In this respect, they can be reasonably expected to maintain the special prestige of luxury products, even in the event of selling off remaining stock, without offering the goods in the style of a careless, rummage table. The court expressly refers to the “Akzente” ruling in continuation of the CJEU rulings “Copard/Dior” (C-59/08) and “Dior/Evora” (C-337/95). This is where selective distribution and brand protection come together – even discounters must take account of this.Representatives of Coty:
Lubberger Lehment (Berlin): Dr. Rani Mallick and Eva Maierski