Ask the BGH: key litigation decisions

No repair with logo

In this decision the Bundesgerichtshof (BGH) acknowledged, in accordance with the practice of the Court of Justice of the EU (CJEU), that, besides the main function of a trademark, ie, to guarantee the origin of a product, there are further protected functions of a trademark, in particular the quality, communication, investment and advertising functions.

The defendant operated several hundred car garages and offered car inspection services in conjunction with the plaintiff’s well-known company logo. The BGH argued that it would have been sufficient to use the plaintiff’s word mark Volkswagen to advertise the inspection services but it did not need to use the company logo. This is an important judgment regarding the use of an original manufacturer’s trademarks in reseller advertisements, etc.

Date with a delimitation agreement

In a ruling on the compatibility of a trademark coexistence/delimitation agreement with antitrust law, the BGH held that the concluding date of a delimitation agreement is relevant to the agreement’s admissibility under antitrust law, even if the law or jurisdiction later changes, provided that no limitation of the free circulation of goods is intended (December 7, 2010).

When the agreement was concluded, it would have been necessary for a realistic risk—that the owner of an older mark (Joop!) would have been able to prevent the user of a younger mark (Jette Joop) from registering and/or using the younger mark—to exist. Whether the situation changes later, due to a change in law or jurisdiction, is of no relevance.

In the same ruling, the BGH held that a contractual clause that is potentially non-compliant with antitrust law can be reduced by the court so that it is compliant with antitrust law. For instance, the clause can be interpreted by the court in accordance with the potential intention of the parties had they known that the clause as contained in the agreement was void under antitrust law.

Despite this judgment, it is highly advisable to draw a coexistence/ delimitation/prior rights agreement only along the lines where there is an actual conflict, and not beyond. This concerns in particular the question of likelihood of confusion, as well as territorial aspects.

Smokeless advertising

The BGH underlined in a recent judgment that the ban on advertising tobacco products in public press organs (based on the European Directive 2003/33/EC regarding the harmonisation of tobacco advertising and sponsoring) extends to an advertisement in which the manufacturer of cigarettes tries to give itself a responsible image by referring to its products without directly advertising them (November 18, 2010).

"THe DeScRIBeD Way OF RecOnFIRmaTIOn By emaIl IS geneRally nOT SuFFIcIenT TO ImPly THe cOnSumeR’S agReemenT WITH TelePHOne callS, eVen IF THe cOnSumeR’S TelePHOne numBeR WaS InDIcaTeD In THe ORIgInal ORDeR FORm."

The advertisement in question was held to be a promotion of the products within the scope of the German Tobacco Act, which is considered by the BGH to be a rule of market behaviour that falls under the German Unfair Competition Act (UWG). The tobacco company could not invoke freedom of speech under the EU Charter of Fundamental Rights because protecting public health to prevent young people from becoming tobacco-dependent is a legitimate aim.

Standard size fits all

In a February 2011 repackaging case concerning parallel imported pharmaceutical preparations, the BGH ruled that a parallel importer is not allowed to create its own new packaging and apply the original trademark to it when it is possible to fill up the original packaging (as used in the country where the product is imported from) with additional blisters so that the standard packaging size in Germany is met (February 10, 2011).

The BGH expressly stated that this is in line with the Treaty on the Functioning of the EU (Art 36 [2] TFEU) and the practice of the CJEU. From an objective point of view, it is not necessary to repackage the product into new packaging. It is still unclear whether the same applies in a case where the imported packaging is bigger than the standard size in Germany. In an older decision (Stilnox), the BGH did decide that the parallel importer could repackage its product into new packaging.

Hung up on permission

In a case concerning unsolicited telephone calls to consumers, the BGH decided that the so-called ‘double opt-in procedure’, which involves sending promotional emails to consumers, does not constitute a particular consumer’s agreement to unsolicited telephone calls.

Under the double opt-in procedure, consumers check a box in an online tool (for example, an online order form) indicating that they can be sent email advertisements, input their email addresses and then receive emails to the inputted addresses. By returning the email, a consumer has to confirm again that he or she agrees to email advertising.

"Regarding simple word reporting, no express agreement from the person referred to in the report is generally necessary. In particular, the fundamental right of free speech is to be considered."

While the BGH generally acknowledged that this procedure is suitable for proving the consumer’s agreement to receiving email advertising, it said that the described way of reconfirmation by email is generally not sufficient to imply the consumer’s agreement with telephone calls, even if the consumer’s telephone number was indicated in the original order form. The advertising company must prove that the indicated telephone number has a relation to the person who sends the email confirmation.

In any case, the advertising company has to diligently document (ie, store) all confirmations it receives. Currently, an update of the German legislation regarding unsolicited telephone advertising is under way. It will be introduced into the German Civil Code. Legal telephone advertising will then require the consumer to provide written confirmation before a telephone call can be made.

Princess personal

In two decisions regarding the personal rights of Charlotte Casiraghi, the daughter of Princess Caroline von Hannover (formerly Caroline of Monaco), the BGH drew a line between the violation of personal rights and permissible reporting of public events in press organs (October 26, 2010). The BGH pointed out that the admissibility criteria are different for visual reporting and written reporting.

The publication of photographs has a potentially more serious effect on personal and privacy rights than a written report. The general rule in Germany is that pictures of people may not be published without their consent, with the exception of certain pictures of people of public interest, provided that the publication is justified and a retrospective assessment leads to the conclusion that the public interest prevails.

This corresponds with the practice of the German Constitutional Court (Bundesverfassungsgericht). In each case the protection of personal rights has to be weighed against the public interest aspect of obtaining information about important public events and people.

The criteria are whether the type of reporting merely satisfies the curiosity of consumers or whether it contains (at least some) objective information and questions of general social interest and provides valuable information to promote the formation of public opinion. The wording used in the same publication is also to be considered and, in general, it is important that the reporting regarding the associated public event stands in the foreground.

Regarding simple word reporting, no express agreement from the person referred to in the report is generally necessary. In particular, the fundamental right of free speech is to be considered. The personal and privacy rights of a person prevail only if a person’s interests are clearly affected. This is not the case when the report refers only to more or less insignificant issues but otherwise does not contain any untrue or disrespectful wording.

Casiraghi’s claims were dismissed, although she did not consent to the publication of pictures of her and the text related to them. The pictures were taken in the course of a public event (the Rose Ball at Monaco) and the text contained some objective information about the event and no untrue or otherwise disrespectful statements about Casiraghi. Generally, the publication reported about her in a positive manner.

Social networks

Facebook and other social networks have recently agreed with the German Minister of the Interior to introduce more protection for their users. A first draft of a general code of conduct for social networks will be jointly presented by the minister and social networks during CeBIT 2012, an information technology trade fair.