The 33rd Civil Chamber of the Munich I Regional Court, specializing in trademark and competition law, ruled on June 1, 2021, in case no. 33 O 12734/19, on a lawsuit filed by the confectionery manufacturer FERRERO, in which the latter asserted rights, among others, to the marks "Butterfinger" and "Baby Ruth".
The competent Chamber upheld the claim to the extent that the plaintiff sought an injunction against the distribution of a "Butterfinger" chocolate bar in a presentation comparable to the US "original". However, to the extent that the plaintiff asserted claims for cancellation with regard to the "Butterfinger" or "Baby Ruth" trademarks, the Chamber largely dismissed the action.
According to the plaintiff's submission, the marks "Butterfinger" and "Baby Ruth" enjoy outstanding renown, at least in the USA. This is because Nestlé, from which the plaintiff acquired parts of its US confectionery business in 2018, distributed chocolate bars under these marks. The defendant, a company from Brühl primarily active in the beverage trade, is the proprietor of German trademark rights to the marks "Butterfinger" and "Baby Ruth" for, among other things, "chocolate products".
With its lawsuit, the plaintiff opposes the registration of these marks and seeks their cancellation due to expiry and bad-faith trademark application. It argues that the sole purpose of the applications was to establish a lucrative threat potential against the plaintiff in order to subsequently sell the trademark rights as profitably as possible. Furthermore, the plaintiff's lawsuit is directed, among other things, against the distribution of a chocolate bar under the mark "Butterfinger" by the defendant, insofar as it features a packaging design almost identical to the bar previously offered by Nestlé in the USA. The defendant had presented such a product in these proceedings as proof of the use maintaining the validity of its "Butterfinger" trademark.
The defendant argues that the asserted claims are unfounded. In particular, the conditions for an abusive trademark application are not met. The defendant did not register the trademarks with the intention of obstruction, but always had an intention to use them itself.
According to the Chamber, the defendant succeeded, on the one hand, in proving the genuine use maintaining the validity of the contested designation "Butterfinger", at least for chocolate products, by submitting conclusive documents demonstrating the promotion and sale of a chocolate bar under the mark "Butterfinger". On the other hand, in the view of the deciding Chamber, the conditions for a bad-faith trademark application were not met. One reason for this was that Nestlé itself had previously held trademark rights to the marks in dispute in Germany but had ceased using them by the end of 2010 at the latest. However, the Chamber considered the distribution of a "Butterfinger" chocolate bar in a presentation almost identical to the US original to be an unfair imitation.
The judgment is not yet legally binding (As of: June 10, 2021).
Source: Press Release 14 of the Munich I Regional Court dated June 1, 2021, Author of the press release:
Judge at the Munich I Regional Court Cornelia Kallert – Press Spokesperson –
