Chocolate biscuit presentation at a trade fair

The Federal Court of Justice (BGH) had to decide whether the mere presentation of a biscuit product allegedly imitated on an international confectionery trade fair would lead to the conclusion that the product would also be offered to domestic consumers in the same packaging.

De Beukelaer has been distributing thin biscuit sticks in Germany under the product name "Mikado" since 1982, which are covered with chocolate for approximately four-fifths of their total length.

A competitor manufactures almost identically designed biscuit sticks, also coated with chocolate, and distributes them in Turkey and other countries under the name "Biscolata Stix". The parties use packaging on which the respective biscuit products are depicted. Otherwise, the product packaging of the parties differs in particular in that they have clearly different product and manufacturer markings.

This competitor exhibited his biscuit product in January 2010 at the International Confectionery Trade Fair (ISM) in Cologne, whereupon De Beukelaer claimed against him for cessation of the offer, promotion, distribution or otherwise placing the biscuit sticks on the market in the specific packaging in Germany.

De Beukelaer considers the competitor's biscuit sticks to be an unfair imitation of the "original product". As a result of the almost identical imitation of the "original product", there is a risk of confusion. Furthermore, the competitor exploits the reputation of the "original product".

The Higher Regional Court of Cologne (OLG Köln) prohibited the competitor from distributing the biscuit sticks in the contested packaging. It found that the product by De Beukelaer had been almost identically imitated and that, due to the depiction of the biscuit sticks on the packages, there was a risk of misleading domestic consumers about the origin of the product. By exhibiting the product at the trade fair in Cologne, the competitor had promoted his products and created the risk that his confectionery would in future be offered, distributed or otherwise placed on the market in Germany.

Court's decision

The BGH ruled withjudgment of 23.10.2014 – Az.: I ZR 133/13 (Press release)that it reversed the judgment of the Higher Regional Court of Cologne (OLG Köln) and dismissed the action.

In the opinion of the BGH, there is a lack of a risk of recurrence which is required for affirming a competition law claim for cessation with respect to the forms of action described in the application for an injunction – namely promotion, offering, distribution and placing on the market – against domestic consumers.

Contrary to the view of the Higher Regional Court of Cologne (OLG Köln), the BGH stated that such a risk of recurrence does not already follow from the product presentation at the international and exclusively specialist audience-accessible confectionery trade fair in Cologne.

Conclusion

The judgment is in line with the trademark law decision-making practice of the BGH, according to which the advertising of a product at an international trade fair and on its own website cannot be taken as an indication of an offering or placing on the market in Germany; rather, it requires the establishment of serious and tangible factual indications for the existence of a corresponding risk of recurrence or first commission (BGH, judgment of 22.04.2010 – Pralinenform II).