Dispute over "Bavarian beer" is not yet over

The dispute between the Bavarian brewing industry and the Dutch brewer BAVARIA over the trademark "BAVARIA HOLLAND BEER" has not yet been finally decided. The I. Civil Senate of the Federal Court of Justice has set aside the judgement in favour of the Bavarian Brewers' Association and referred the case back to the Higher Regional Court.

The applicant, Bayerischer Brauerbund e.V., is the umbrella organisation of the Bavarian brewing industry. On 20 January 1994, at its request, the name 'Bayerisches Bier' was entered by the Federal Government in the register of protected designations of origin and protected geographical indications kept by the European Commission. The geographical indication was registered by Council Regulation (EC) No 1347/01 of 28 June 2001. The defendant Dutch brewery is the proprietor of the internationally registered trade mark No. 645 349 with the word elements "BAVARIA HOLLAND BEER". This trade mark enjoys protection in Germany with the seniority date of 28 April 1995 for, inter alia, the product "beer". The Bavarian Brewers' Association considers the fact that the defendant has extended the protection of this international trade mark to Germany to be an infringement of the protected geographical indication "Bayerisches Bier". It demands that the defendant renounce the protection of its trade mark in Germany.

The action was successful before the Munich I Regional Court and the Munich Higher Regional Court. In its appeal, the defendant seeks the dismissal of the action. After a first hearing at the end of 2007, the Federal Supreme Court (BGH) referred several questions on the interpretation of Union law to the Court of Justice of the European Union (decision of 14 February 2008 I ZR 69/04, GRUR 2008, 669 - Bayerisches Bier I; cf. press release of the BGH No. 30/2008).

The geographical indication "Bayerisches Bier" had been registered according to a simplified procedure provided for in the relevant EU regulation, whereby it was unclear with which seniority an indication registered in this way enjoys protection. After the ECJ answered this question in its judgement of 22 December 2010 (C-120/08, GRUR 2011, 189) in such a way that it is not the application - made in 1994 - by the Federal Government that is relevant, but the publication - in this case only in 2001 - of the registration in European law, the Federal Supreme Court has now set aside the appeal judgement and referred the case back to the Court of Appeal for a new hearing and decision.

The Court of Appeal, which had exclusively referred to 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 Trade Mark Act on the protection of geographical indications of source (Sections 126, 127 Trade Mark Act). Although this protection under national law is in principle subordinate to the protection under European law, it continues to exist until the indication "Bayerisches Bier" is entered in the register kept by the European Commission. In the present case, it is possible that the defendant's trade mark takes unfair advantage of the reputation of the designation "Bayerisches Bier" (§ 127 para. 3 MarkenG). Whether this is the case must now be decided by the Munich Higher Regional Court.

Judgment of the BHG of 22 September 2011 - I ZR 69/04 - Bayerisches Bier II

Lower courts:

Munich Regional Court I - Judgment of 2 September 2003 - 7 O 16532/01

Munich Higher Regional Court - Judgment of 27 May 2004 - 29 U 5084/03


Source: Press release of the BGH


Attorney at Law Michael Ullrich, LL.M. (Information Law)

Specialist lawyer for information technology law

E-mail: info@goldberg.de