The 33rd Civil Chamber of the Regional Court of Munich I, which specialises in trade mark and competition law, ruled on 1 June 2021, ref. 33 O 12734/19, on an action brought by the confectionery manufacturer FERRERO claiming, inter alia, rights to the signs "Butterfinger" and "Baby Ruth".
The Board of Appeal granted the application insofar as the applicant sought a prohibition of the marketing of a chocolate bar "Butterfinger" in a presentation comparable to the US "original". To the extent that the plaintiff is seeking cancellation of the "Butterfinger" or "Baby Ruth" trade marks, the board largely dismissed the action.
According to the applicant's submissions, the signs "Butterfinger" and "Baby Ruth" have an outstanding reputation, at least in the USA. This is because Nestlé, from which the plaintiff had acquired parts of the US confectionery business in 2018, marketed chocolate bars under these signs. The defendant, a company from Brühl, which is mainly active in the beverage trade, is the owner of German trade mark rights to the signs "Butterfinger" and "Baby Ruth" for, inter alia, "chocolate goods".
In its action, the applicant contests the registration of these signs and seeks their cancellation on the grounds of revocation and filing a trade mark application in bad faith. It is of the opinion that the sole purpose of the applications was to build up a lucrative threat potential against the applicant in order to be able to sell the trade mark rights as profitably as possible afterwards. In its action, the plaintiff also contests, inter alia, the defendant's marketing of a chocolate bar under the sign "Butterfinger", in so far as it has an almost identical packaging design to the bar offered by Nestlé in the USA at the time. The defendant had submitted such a product in the present proceedings to prove the use of its "Butterfinger" trade mark which preserved the rights.
The defendant is of the opinion that the asserted claims do not exist. In particular, the requirements of an abusive trade mark application were not met. The defendant had not applied for the trade marks with the intention of obstructing use, but had always shown its own intention to use them.
In the board's view, the defendant succeeded in proving, on the one hand, that the challenged designation "Butterfinger" had been put to genuine use, at least for chocolate products, by submitting meaningful documents proving the advertising and sale of a chocolate bar under the sign "Butterfinger". Secondly, in the opinion of the adjudicating board, the requirements of a trade mark application in bad faith were not met. The reason for this was, inter alia, that Nestlé itself had held trade mark rights to the signs at issue in Germany in the past, but had no longer made use of them by the end of 2010 at the latest. However, the Board considered the distribution of a chocolate bar "Butterfinger" in a presentation almost identical to the US original to be unfair imitation.
The judgement is not legally binding (as of 10.06.2021).
Source: Press release 14 of the Regional Court Munich I of 01.06.2021, Author of the press release:
Judge at the Regional Court Munich I Cornelia Kallert - Press spokeswoman -
