The dispute between the Bavarian brewing industry and the Dutch brewery BAVARIA concerning the 'BAVARIA HOLLAND BEER' trademark has not yet been finally decided. The First Civil Senate of the Federal Court of Justice overturned the judgment rendered in favor of the Bavarian Brewers' Association and remanded the case to the Higher Regional Court.
The plaintiff, the Bavarian Brewers' Association (Bayerischer Brauerbund e.V.), is the umbrella organization of the Bavarian brewing industry. Upon its application, the designation 'Bayerisches Bier' (Bavarian Beer) was registered by the German Federal Government on January 20, 1994, for inclusion in the European Commission's register of protected designations of origin and geographical indications. The geographical indication was registered with Council Regulation (EC) No. 1347/01 of June 28, 2001. The defendant Dutch brewery is the proprietor of internationally registered trademark No. 645 349, comprising the word elements 'BAVARIA HOLLAND BEER'. This trademark enjoys protection in Germany, with a priority date of April 28, 1995, for goods including 'beer'. The Bavarian Brewers' Association views the defendant's extension of protection for this international trademark to Germany as an infringement of the protected geographical indication 'Bayerisches Bier'. It demands that the defendant waive the protection of its trademark in Germany.
The action was successful before the Munich I Regional Court and the Munich Higher Regional Court. With its appeal on points of law (Revision), the defendant seeks the dismissal of the action. Following an initial hearing at the end of 2007, the Federal Court of Justice (BGH) referred several questions concerning the interpretation of Union law to the Court of Justice of the European Union (CJEU) (Decision of February 14, 2008 I ZR 69/04, GRUR 2008, 669 – Bayerisches Bier I; cf. BGH Press Release No. 30/2008).
The geographical indication 'Bayerisches Bier' had been registered under a simplified procedure provided for in the relevant EU regulation, although it remained unclear which priority date applied to an indication registered in this manner. After the CJEU, in its judgment of December 22, 2010 (C-120/08, GRUR 2011, 189), answered this question by stating that the decisive factor is not the application by the Federal Government – which occurred in 1994 – but rather the publication of the registration in European law – which occurred only in 2001 in this case – the Federal Court of Justice has now overturned the appellate judgment and remanded the case to the appellate court for a new hearing and decision.
The appellate court, which had exclusively relied on the European regulation for the protection of the geographical indication 'Bayerisches Bier', will now have to examine whether the claim asserted in the action can be derived from the provisions of the German Trademark Act concerning the protection of geographical indications of origin (§§ 126, 127 MarkenG). While this protection under national law generally recedes behind the protection afforded by European law, it continues to exist until the registration of the indication 'Bayerisches Bier' in the register maintained by the European Commission. In the present case, it is conceivable that the defendant's trademark unfairly exploits the reputation of the designation 'Bayerisches Bier' (§ 127 para. 3 MarkenG). The Munich Higher Regional Court must now decide whether this is the case.
Judgment of the Federal Court of Justice (BGH) of September 22, 2011 – I ZR 69/04 – Bayerisches Bier II
Lower Courts:
Munich I Regional Court – Judgment of September 2, 2003 – 7 O 16532/01
Munich Higher Regional Court – Judgment of May 27, 2004 – 29 U 5084/03
Source: Press release of the Federal Court of Justice
Attorney Michael Ullrich, LL.M. (Information Law)
Specialist Attorney for Information Technology Law
Email: info@goldberg.de
