Confectionery Industry Special · 2019-01-17 · phrase should have been "Arta Culinara“ or "Arte...

DECEMBER 2014

Confectionery Industry Special

Current case law on trademark and competition law, IT & digital business, media and entertainment law, customs law, commercial and distribution law, as well as antitrust law

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Annual Review 2014 2014

Overview of Topics

Trademark Law

– "Sweet marks” – Current case law at German

and European Level

2

– Effective protection against imitations at the

Confectionery Trade Fair

12

– Descriptive marks: Design instead of trade-

mark?

14

Competition Law

– Negative product assessments and possible

legal defense

16

IT & Digital Business

– New consumer law for online trading – What is

really new? What are the new disclosure obliga-

tions? How has the right of cancelation

changed?

19

Media and Entertainment Law

– Guideline on product placement

23

Customs Law

– Formulations – A bitter customs aftertaste?

26

– New information on the capping of taxes on

electricity and energy – Secure your refund

claim!

27

Commercial and Distribution Law

– In the case of activities in foreign countries: Be

cautious about the agreement on legal venue or

arbitration!

28

Antitrust Law

The German Federal Cartel Office intensifies

its investigation activities

29

DECEMBER 2014



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TRADEMARK LAW

"Sweet marks” – Current case law at German and

European Level

1. Judgments on registrability

All brand manufacturers know how difficult it can be to

convince the trademark offices of the registrability of

certain words, slogans, or other presentations. Even very

easily memorable marks are often rejected by the offices

with the argument of a lack of distinctiveness. That

means that the mark only provides a description of the

product, but no reference to the company behind it,

which is a prerequisite for trademark protection. The

following judgments give a good overview of what is

considered suitable for registration as a trademark.

1.1 Distinctive character of word marks

The Board of Appeal of the EU Trade Mark Office (Office

for Harmonization in the Internal Market) rejected the

trademark application for "GREEN BEANS“.1 The term

allegedly reflected only one of the main components in

the registered drinks, namely coffee, and was therefore

not recognized as a mark.

The mark "CULINARTE”, on the other hand, was granted

a minimum level of distinctiveness.2 It was claimed that

the term came from the Romanian words "Culinar“ and

"Arte” and it is therefore descriptive and suggestive.

According to regular Romanian syntax, however, the

phrase should have been "Arta Culinara“ or "Arte Culi-

nare” because the adjective normally precedes the noun.

1 OHIM-BoA, 02.12.2013, R-1530/2013-1 – GREEN BEANS 2 OHIM-BoA, 13.12.2013, R 1543/2013-5 – CULINARTE

The German Federal Patent Court rejected the applica-

tion for trademark protection for "Chocolatino" because it

was stated that the name was based on the Italian

spelling “ciocolatino”, which means "small chocolate" or

"praline".3

The application for "Richard Wagner balls" was also

unable to rely on any commercial reference to origin. The

trademark was simply a reference to a product that was

offered in connection with an event relating to the famous

composer.4 On the same grounds, the applications for

"Gustav Mahler Röschen” (Gustav Mahler Rosebuds)

and "Gustav Mahler Röslein” (Gustav Mahler Flowers)

were rejected.56

The German Federal Patent Court considered the term

"Bachblüten“ (Bach flowers) as being simply the usual

term for different plants defined by Dr. Edward Bach,

which are used in Bach flower therapy and refer to the

underlying formulation.7 Trademark protection was there-

fore not granted.

The mark "GerstenWonne“ (Barley Bliss) was also re-

jected because the term referred only to a laudatory

reference to the product that could be made all from the

cereal "barley" and from which the consumer receives

culinary pleasure.8

The German Federal Patent Court ordered the deletion

of the recently registered trademark "SPIRIT” on the

grounds that the term has to be interpreted as factual

3 Federal Patent Court, 03.03.2014, 25 W (pat) 527/12 – Chocolatino

4 Federal Patent Court, 03.02.2014, 25 W (pat) 560/12 – Richard Wagner – Barren (appeal was admitted) 5 Federal Patent Court, 31.01.2014, 25 W (pat) 564/12 – Gustav Mahler Röschen 6 Federal Patent Court, 31.01.2014, 25 W (pat) 564/12 – Gustav Mahler Röslein 7 Federal Patent Court, 20.01.2014, 25 W (pat) 587/12 – Bachblüten 8 Federal Patent Court, 07.10.2013, 25 W (pat) 515/12 – GerstenWonne

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information with regard to the determination or effect of

the product "tea".9

1.2 Distinctive character of word and figurative

marks

If a word mark alone is not granted the necessary distinc-

tiveness, it can help if a graphic design is added to the

mark. Caution is required, however. The figurative com-

ponents must not only represent the content of the mark

or have a purely decorative effect.

The OHIM Board of Appeal there-

fore rejected trademark protection

for the word mark/figurative mark

"Deluxe“.10

It stated that the term

was simply praising luxury products and the curved,

silver font only reflected the content of the word "deluxe".

The Board of Appeal of OHIM rejected the

registration of both the word and figurative

mark "EAT GLUTEN FREE“11

and "ALMOND

MARZIPAN“12

. It stated that the word compo-

nents were purely descriptive and the graphic

design was considered trivial.

Katjes also failed with the Court of Justice of the Europe-

an Union (General Court) with its

request for market protection of

the word and figurative mark

"Yoghurt Gums“. The graphic

design of the purely descriptive word component did not

help to make the mark suitable fall trademark protection

9 Federal Patent Court, 23.12.2013, 25 W (pat) 82/12 – SPIRIT 10 OHIM-BoA, 06.03.2014, R 1223/2013-1 – Deluxe 11 OHIM-BoA, 12.05.2014, R 1841/2013-4 – EAT GLUTEN FREE 12 OHIM-BoA, 01.04.2014, R 2441/2013-5 – ALMOND MARZIPAN

because the font and stroke width of the letter was usual

(see also in this respect our Confectionery Industry Spe-

cial Annual Review Newsletter 2013).13

The application submitted by Aldi for

packaging with the label "Classic

strong aroma roasted coffee“ was

considered only to be a direct descrip-

tion of the nature and quality of the pro

"coffee". The figurative elements (cof-

fee beans with a mountain landscape)

was considered typical for coffee and

widespread in the relevant product

area.14

Trademark protection was

therefore rejected.

The word and figurative

mark "OMEGAKids,” on the

other hand, was granted at least a minimum level of

distinctiveness because the mark was not perceived to

be directly descriptive.15

Since the Swedish term "gifflar“

means "crescent shaped wheat

roll,“ it was considered to be de-

scriptive of the goods "bread,

cakes, baked goods, cookies, etc.", the Swedish and

Finnish population have to be considered part of the

relevant target market, so for this reason the word and

figurative mark was not considered to have the neces-

sary distinctive nature. The graphic design did not

change this, either. 16

13 GC, 15.05.2014, T-366/12 – Yoghurt Gums 14 OHIM-BoA, 07.02.2014, R 1672/2013-4 – RÖSTKAFFEE CLASSIC KRÄFTIGES AROMA 15 OHIM-BoA, 05.11.2013, R 1027/2013-5 – OMEGAKIDS 16 GC, 09.07.2014, T-520/12,– Gifflar

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The German Federal Supreme Court ordered the dele-

tion of the word and figurative mark

"Gute Laune Drops“ (cheerful drops) for

“fine baked goods” and similar prod-

ucts.17

The Federal Supreme Court,

however, referred the case with regard

to some of the goods, such as ice

cream, chewing gum, coffee, etc., back to the Federal

Patent Court for renewed proceedings. The Federal

Supreme Court held that a simple graphic design was not

grounds for distinctiveness. The fact that the trademark

holder had been using the mark for many years without

objection also did not help the case. Protection of legiti-

mate expectations would only be considered in accord-

ance with trademark law after a period of 10 years.

Practical tip:

The purely decorative design of a descriptive term is not

enough to give a mark the necessary level of distinctive-

ness. The addition of images only help with regard to

registrability if the image does not simply illustrate the

purely descriptive mark.

1.3 Distinctiveness of figurative marks

The application submitted by energy drink

manufacturer Monster Energy for registration

of a peace sign was rejected.18

Although the

mark was considered to have symbolic value,

it nevertheless needed to have a minimum level distinc-

tiveness. In the present case, however, the sign only had

the universal nature of a peace symbol and did not make

reference to a particular manufacturer.

17 Federal Supreme Court, 10.07.2014, I ZB 18/13 – Gute Laune Drops 18 OHIM-BoA, 11.12.2013, R 1285/2013-1 – SYMBOL

The German Federal Patent Court also did not grant any

distinctiveness to the illustrated mark for

a cookie made by Griesson – De

Beukelaer, because it was only a lifelike

representation of a cookie. It was not

considered to have any special design

features, because the spherical shape and decoration

are considered to be usual in the industry for pralines

and confectionery.19

The Federal Patent Court makes

clear that two-dimensional representations of goods or

their packaging on the one hand and three-dimensional

forms of the same goods or their packaging on the other

hand are to be treated in the same way.

In addition, the German Federal Patent Court used this

decision to summarize the requirements of registrability

of a sign if it consists solely of the shape of the product.

According to this summary, a mark can only be regis-

tered if a corresponding mark consists not only of the

representation of characteristics, which are typical for

that type of good or its packaging, but rather displays

characteristic features that depart significantly from the

norm or customs of the sector.

Wrigley was unsuccessful with the following figurative

marks:

The Board of Appeal of OHIM considered this to be only

another usual form in the confectionery market.20

19 Federal Patent Court, 08.01.2014, 25 W (pat) 522/13 20 OHIM-BoA, 17.06.2014, R 168/2014-5 and R 169/2014-5

DECEMBER 2014



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The OHIM did no even grant the word and figurative

marks “Extra”

trademark protection because the word "Extra” was only

understood as a usual promotional term.21

1.4 Distinctive character of shape-of-product marks

Shape-of-product marks are 3-D marks that represent

the shape of the product itself.

The problem with shape-of-product marks is that it is

difficult for consumers to determine a reference to the

origin of the product simply from the form of the product,

i.e. to recognize the form as a mark. This is due to the

fact that three-dimensional marks are not necessarily

perceived in the same way as word marks or figurative

marks, which are independent of their appearance.

Therefore for registrability it is necessary that the form

must significantly depart from the norm or customs of the

sector.

The Board of Appeal of OHIM considered that the follow-

ing shape-of-product marks did not meet this require-

ment:

22 23

21 OHIM-BoA 19.05.2014, R 218/2014-5 and R 199/2014-5 22 OHIM-BoA, 19.05.2014, R 1911/2013-4 (Grupo Bimbo S.A.B. de C.V.)

24 25

The General Court of the European Union denied the

illustrated 3 D mark in candy form trademark protection.26

It stated that the form of the prod-

uct was in line with the normal

appearance of the goods in ques-

tion (including confectionery).

1.5 Distinctiveness of slogans

At German and European level over the past year, there

have been several decisions about whether slogans can

be registered as a mark. In order to assess the distinc-

tiveness of general advertising messages and slogans,

the same benchmarks apply as for other marks. Se-

quence of words that is like a slogan can have a distinc-

tive nature although it can be considered at the same

time or even primarily as advertising material, however it

cannot be understood on the market exclusively as an

advertisement. That can be the position, in particular,

where those marks are not merely an ordinary advertis-

ing message, but possess a certain originality or reso-

nance, requiring little in the way of interpretation by the

relevant public, or setting off a cognitive process in the

minds of that public.

23 OHIM-BoA, 06.03.2014, R 1405/2013-1 (Intersnack Group GmbH & Co. KG) 24 OHIM-BoA, 03.06.2014, R 2449/2013-2 (Grupo Bimbo S.A.B. de C.V.) 25 OHIM-BoA, 18.11.2013, R 839/2013-4 – FORM OF A BEAR 26 GC, 12.12.2013, T-156/12 – SWEET TEC (see also our Confectionery Industry Special Annual Review 2013 Newsletter)

DECEMBER 2014



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The General Court of the European Union held that the

slogan "La qualité est la meilleure des recettes“ (in Eng-

lish: "quality is the best recipe“) was not distinctive be-

cause it did not include any reference to the originating

company.27

The slogan was written in simple French,

there was nothing imaginative about it, but only conveyed

the simple message that the mark holder - Dr. August

Oetker - produces quality goods.

OHIM's Board of Appeal rejected protection as a trade-

mark for the slogans "MYDIET"28

, "2good“29

, "FOOD

SHOULD TASTE GOOD“30

and "BE HAPPY"31

because

they were made up of simple English terms which did not

meet the required level of originality and therefore did not

meet the requirements with regard to distinctiveness.

The slogan "WHENEVER – WHEREVER" was classified

as descriptive because the term provided obvious and

direct information about the quality and characteristics of

the product in question, stating that it is available for

consumption everywhere and all times. The slogan there-

fore did not have the necessary level of distinctiveness.32

The German Federal Patent Court stated that it could not

register the Eckes-Granini slogan "we make life more

fruitful“ because there are lots of slogans beginning with

"we make life more …“ and these are only understood as

products that make life easier. For that reason, the slo-

gan was considered only to be praise of the product in an

advertisement that did not display any originality.33

27 GC, 12.02.2014, T-570/11 – La qualité est la meilleure des recettes 28 OHIM-BoA, 13.03.2014, R 2147/2013-1 – MYDIET 29 OHIM-BoA, 27.02.2014, R 996/2013-1 – 2good 30 OHIM-BoA, 22.01.2014, R 671/2013-3 – FOOD SHOULD TASTE GOOD 31 OHIM-BoA, 17.10.2013, R 32/2013-1 – BE HAPPY 32 OHIM-BoA, 14.03.2014, R 845/2013-5 – Whenever - Wherever 33 Federal Patent Court 19.03.2014, 26 W (pat) 534/12 – we make life more fruitful

2. Conflicts between trademarks

2.1 Likelihood of confusion of word marks

The likelihood of confusion between the mark "friends“ by

Ferrero and "CITY OF FRIENDS“ was rejected. The

older mark was only assigned a weak level of distinctive-

ness and the part that distinguishes between the two

marks, "CITY OF”, takes the correspondence between

"friends“ into the background with regard to its percep-

tion.34

At the same time, the Board of Appeal of OHIM

last year affirmed the likelihood of confusion between the

marks "Cool Friends“ and "Friends“ (see in this respect

our Confectionery Industry Special Annual Review News-

letter 2013).35

In the following decision, which was of particular local

relevance, the Association for the Protection of Dresden

Stollen tried to prevent registration of “Dresdner Striezel-

Glühwein” as a mark. The opposition was based on the

collective mark and the geographic indication of source

"Dresdner Stollen”. The Association for the Protection of

Dresden Stollen argued that the marks were similar con-

ceptual because "Striezel“ is a synonym for "Stollen”.

That was not sufficient for the Board of Appeal of OHIM,

however. There was no similarity either with regard to

goods or the mark, so the opposition was rejected.36

Although the marks "MEISTERKORN“ and "MISTER-

CORN“ overlap, the likelihood of confusion under classes

5 and 41 were rejected. In case of class 30, the exact

product must be assigned. The likelihood of confusion

was affirmed, for example, for "bread, baked goods”, but

not for "flour, pasta, cocoa powder”.37

34 OHIM-BoA, 06.03.2014, R 1240/2012-1 – CITY OF FRIENDS 35 OHIM-BoA, 08.11.2012, R 2021/2011-1 – COOL FRIENDS 36 OHIM-BoA, 17.10.2013, R 1825/2012-4 – DRESDNER STRIEZEL-GLÜHWEIN 37 OHIM-BoA, 09.10.2013, R 2143/2012-2 – MEISTERKORN

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The General Court of the European Union confirmed the

likelihood of confusion between "JUNGBORN“ and

"BORN”, thereby derogating from the principle that the

market primarily pays attention to similarities in the be-

ginning of the mark.38

The fact that the younger mark

consists solely of the older mark and another part added

before it, was considered an indication of similarity.

The German Federal Patent Court rejected Eckes-

Granini’s application for likelihood of confusion between

"RAMBA ZAMBA“ and "ZAMBA”.39

The word "Zamba“

here was not a feature of the overall impression of the

younger mark and furthermore, "Ramba Zamba“ is a

synonym for noise, fun, ruckus, etc.

Likelihood of confusion was confirmed between "MIS-

SANA“ and "MILKANA“ - in particular with regard to visu-

al similarities.40

The German Federal Patent Court –

unlike the trademark office – considered the beginning

and/or end component of the comparable mark ("MI-“

respectively "-ANA“) as not being "used" in the area of

milk products (yet), because there were no sufficient

discernible indicators of this. The examples of marks

given by the trademark office with the initial letters "MI-“

("Milfina“, "Milsani“, "Milbona“, "Milino“ and "Milram“)

when not considered grounds for the assumption that the

beginning of the word was being used in the product area

in question. Nothing is known either with regard to the

use situation of the total of 625 marks listed by the

trademark office registered in class 29 that apparently

end in "-ana“.

38 GC, 11.06.2014, T-401/12 – JUNGBORN 39 Federal Patent Court, 12.02.2014, 26 W (pat) 545/12 – RAMBA ZAMBA 40 Federal Patent Court, 22.01.2014, 28 W (pat) 107/12 – MISSANA

2.2 Likelihood of confusion of complex trade-

marks

In 2013/2014, the following noteworthy decisions were

made at European and German level with regard of

"complex marks“ (combined word/figurative marks):

The General Court of the European Union rejected the

possibility of the likelihood of confusion

between the figurative mark ”goldstück“

(gold coin) and the word mark "Goldsteig“

(golden climb).41

The old mark was granted only a week

level of distinctiveness and the marks were considered to

be more different than similar. While "Goldsteig a moun-

tain trail in the Bavarian forest, "gold coins" refer to a

gold piece or a vulnerable person.

With regard to the word and figurative mark "MI-

LANOWEK CREAM FUDGE, the Gen-

eral Court of the European Union con-

sidered that there was no likelihood of

confusion with the following older Ger-

man marks held him by PICO Food

GmbH:42

41 GC, 29.01.2014, T-47/13 – goldstück 42

GC, 09.04.2014, T-623/11– MILANOWEK CREAM FUDGE

DECEMBER 2014



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Although the marks were not considered to be complete-

ly dissimilar, particularly with regard to the cow. But this

symbol was allocated only a week level of distinctive-

ness. Otherwise the marks would have crucial differ-

ences, in particular, there was no overlapping in the word

components, except for the "CREAM FUDGE" label.

The General Court of the Euro-

pean Union did not consider that

there was any likelihood of con-

fusion between the

word/figurative mark "Sani“ and

two older word/figurative marks

"Hani“ and "RANI“. There was

no visual or conceptual similarity

and only a slight phonetic similarity of the marks.43

Between the word mark "GUMMI LUNCH“ held by Me-

derer and the word/figurative

mark "GUMMY“, likelihood of

confusion was affirmed as a

result of the visual and phonetic similarity between the

marks with regard to the first word element for the Span-

ish market, which was the market at issue in this case.44

Mederer was also unsuccessful when it

came to the word and figurative mark

"Gummi Bear Rings“ because confusion

with the word and figurative mark

"GUMMY“ was affirmed. The consumers could have

considered the more recent mark to be a variation of the

older mark.45

43 GC, 24.06.2014, T-523/12 – SANI 44 OHIM-BoA, 07.04.2014, R 780/2013-5 – GUMMI LUNCH 45 OHIM-BoA, 16.12.2013, R 225/2013-5 – Gummi Bear-Rings

Likelihood of confusion was assumed for the marks

"Cléd’Or“ and "COTE D’OR”.46

In addition to the similarity of the product and the marks,

the opposing trademark had an enhanced distinctive

character in the Benelux states for "chocolate products“.

There is likelihood of confusion be-

tween the word mark "BLACKPOW-

ERENERGY” and a mark relating to

the design of a chocolate bar with

"Zetti BLACK POWER 88 % CACAO

MIT GUARANA" printed on it because

the term „BLACK POWER" is the

dominant element of the older mark

and the only distinctive element of the

younger mark.47

The figurative mark "SELECT“ was confirmed to have an

average level of distinctiveness, despite being a descrip-

tive term. Nevertheless, any likelihood of confusion with

"7 SELECT“ was rejected because the two marks only

had the week element "Select“ in common, both the

figurative marks were otherwise very different.48

46 OHIM-BoA, 21.11.2013, R 1005/2013-1 – Cléd'Or 47 OHIM-BoA, 30.04.2014, R 2206/2013-5 – BLACKPOWERENERGY 48 OHIM-BoA, 11.06.2014, R 736/2013-2 – 7 SELECT

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A decision in which the distinctive nature of a mark was

actually acknowledged correctly at EU level during the

assessment of the likelihood of confusion.

In turn, the Board of Appeal of OHIM, did not do this in

the subsequent decision. Here,

likelihood of confusion was

acknowledged to exist between

the marks "Deliplus“ and "DELI’MAX“ because the be-

ginning of the words is identical and the two added terms

"plus“ (French for "more“) and "max“ (an abbreviation of

"maximum“) describe a comparison between things.49

The Board of Appeal of OHIM affirmed the likelihood of

confusion between the word and

figurative mark "Milki“ and

"MILKID“,50

although the registered

mark included a range of additional

elements (a milk drop wearing a cap

and smiling while lick it's lips, as well as a being sur-

rounded by splashes of liquid). It was considered that

consumers perceive this as purely decorative. Otherwise,

the marks differ only on the basis of the last letter "D“.

The General Court of the European Union confirmed that

there was likelihood of confusion be-

tween the word and figurative mark

"Maestro de Olive“ and "MAESTRO“.51

The figurative element of the registered

mark and also the supplement "de

Olive“ were considered to be of only a subordinate nature

here. Therefore, "Maestro“ was the more distinctive and

dominant component in the marks.

49 OHIM-BoA, 02.04.2014, R 1168/2013-5 – Deliplus 50 OHIM-BoA, 21.11.2013, R 1268/2013 - MILKI 51 GC, 05.12.2013, T-4/12 – Maestro de Olive

2.3. Conflicts in product packaging

The Higher Regional Court of Cologne

issued a judgment in the dispute between

Haribo and Lindt & Sprüngli on the in-

fringement of the word mark "GOLDBÄR“

(gold bear) by the chocolate figures known

as "Lindt-Teddys” packed in gold foil.52

Unlike Cologne Regional Court, the court did not consid-

er the older mark to have been infringed. In principle, it is

possible for a word mark to be breached by the use of a

three-dimensional design. The significant factor, howev-

er, is the printing of the Lindt logo, as well as the name

"Lindt Teddy“. This could be considered evidence of the

origin, especially since the product is also similar to

Lindt’s well-known “gold bunnies”.

The Higher Regional Court of Cologne also decided on

the imitation of chocolate bars. A Turkish confectionery

manufacturer offered the following chocolate bars with

the names "Winergy“ and "Wish“ at a confectionery trade

fair:

Mars objected to the packaging design as unpermitted

imitations of the packaging design of "Bounty“ and

"Snickers“. The court did not consider the packaging of

"Wish“ as worthy of prohibition because it allegedly has

an independent appearance. "Winergy“, however, took

over the characteristic features of the "Snickers“ packag-

ing and simply converted this into a more dynamic form.

Therefore, an anti-competitive passing-off was affirmed.53

52 Cologne Higher Regional Court, 11.04.2014, 6 U 230/12 – Goldbär 53 Cologne Higher Regional Court, 20.12.2013, 6 U 85/13 – Bounty and Snickers

DECEMBER 2014



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2.4 Similarity of goods

As justification of likelihood of confusion, not only the

similarity of the marks is a deciding factor. The older

mark must also be protected for goods and services that

are identical or similar to the newly applied mark.

The products "ice cream, frozen yogurt, etc.“ are consid-

ered similar to "chocolate products and items“ in the

same class.54

"Pastries” in class 30 are considered similar to "chocolate

and chocolate bars with and without additions“ because

both goods are consumed in order to fulfill the need for

something sweet. They are also often mixed together,

e.g. in deserts or small cakes.55

On the other hand, fruit sauces were considered different

from "baked goods”.56

The goods are not considered

complementary because it is not apparent that it is es-

sential or even usual in the trade to add fruit sauces for

the consumption of baked goods.

The products "jams, compotes” in class 29 and "sugar;

honey, molasses” in class 30 are similar to the products

"sweets, chocolate products, confectionery”, because

they complement each other mutually.57

There is also

considered to be a certain similarity to "coffee”, however,

only a slight similarity to "milk and milk products“.

54 OHIM-BoA, 21.11.2013, R 1007/2013-1 – Cléd'Or 55 OHIM-BoA, 30.04.2014, R 2206/2013-5 – BLACKPOWERENERGY 56 OHIM-BoA, 17.10.2013, R 1825/2012-4 – DRESDNER STRIEZEL-GLÜHWEIN 57 OHIM-BoA, 17.02.2014, R 622/2013-1 – götterfunken

A high level of similarity was affirmed, however, between

“milk and milk products” and “coffee, cocoa and choco-

late drinks” in class 30.58

3. Proof of genuine use

In principle, marks can only be implemented if they are

used. Upon the applicant's request, the holder of an older

mark must provide proof that the mark is being genuinely

used or that there are justified reasons for its lack of use.

An interesting decision on proof of use was issued by the

General Court of the European Union with regard to the

mark "Passaia".59

During opposition proceedings, Rivella

had to prove genuine use of its international mark "Pas-

saia“ for Germany. In order to do so, Rivella submitted

use material from Switzerland referring to an agreement

between Germany and Switzerland dating back to 1892

that makes use in the other country in each case equal to

domestic use. The General Court decided that this

agreement, however, only applies between the two

states and has no influence on community trade law. Use

in Switzerland therefore provides no proof of use for a

German part of an IR-trademark in proceedings before

the EU Trademark Office.

58 Federal Patent Court, 22.01.2014, 28 W (pat) 107/12 – MISSANA 59 GC, 12.12.2013, C445/ 12 P - BASKAYA

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Despite the submission of a written declaration by its

general manager, two photos of displays in its patis-

series, monthly lists of chocolate sales in a year (annual-

ly probably 40 kg to 60 kg of handmade chocolate prod-

ucts) and excerpts from its website, Reber was not suc-

cessful in providing proof of genuine use of the mark

"WALZERTRAUM“.60

The European Court of Justice

rules that even though the products are handmade, the

quantities sold are not sufficient to a serious portion of

the German chocolate and praline market, meaning that

the mark has only marginal local significance. The argu-

ment that the products are sold on the basis of exclusivity

and their exquisite flavor in only a few sales locations

and not available by mail or over the Internet was not

convincing.

It is a notable factor in the decision that the court referred

only to the generic term in the list of goods, in this case

"chocolate products" and not in particular to pralines. It

was considered to be up to the trademark owner to put

the list of goods into concrete terms if its mark was to

enjoy protection for particular goods.

60 ECJ, 17.07.2014, C141/ 13 P – Walzer Traum

Practical tip:

Trademark owners should check the list of goods for old

marks and take into account any limitation in the list of

goods for the concrete goods/services being used. In

case of new mark applications, in addition to the generic

terms, at least the most important individual

goods/service must also be listed.

Margret Knitter, LL.M.

[email protected]

DECEMBER 2014



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Effective protection against imitations at the Confec-

tionery Trade Fair

Trade fairs are irreplaceable for the exchange of innova-

tions, ideas and inspiration. Trade fairs are irreplaceable

for business. Trade fairs can generate a spirit of opti-

mism. On a large scale for the entire industry or on a

small scale for the individual companies. Trade fairs,

however, can also become a bitter experience. In particu-

lar if an unscrupulous competitor displays imitations,

perhaps even in the same place where the company's

goods are on display.

This is what happened to De Beukelaer. An almost iden-

tical copy of their “Mikado” cookie sticks was exhibited by

a foreign competitor. De Beukelaer defended itself and

Cologne Higher Regional Court considered the imitation

to be an anti-competitive therefore misleading to domes-

tic consumers. The Federal Court of Justice, however,

set aside this judgment (judgment of 23.102014, Case: I

ZR 133/13). Not because it assessed the imitator differ-

ently but because it had only been proven that the imita-

tor presented the product at the trade fair. Simple

presentation at a trade fair cannot be the basis for an

assumption that the product is also actually on offer do-

mestically.

But what can we learn now from the judgment? Is it actu-

ally possible to initiate proceedings against imitations at

trade fairs? Yes, effective proceedings are possible. This

requires concentrated action between manufacturers and

their attorneys. An overview of the most important princi-

ples:

1. Preparation

Expect the imitator to know what they are doing and act

in an appropriately clever and prepared manner. You

need to be just as prepared.

If you are aware of a potential imitator, check whether

they are exhibiting at the trade fair. Also check whether

they deliver to or supply Germany. Collect material ac-

cordingly. In order to avoid decisions such as the one

above, manufacturers must be able to prove in case of

doubt that the imitator also supplies Germany.

Even if exhibiting does not result in a legal assumption of

offering, in fact, this is often the case. And anyone mak-

ing an offer must necessarily do so to third parties. The

chances of exposing the imitators are therefore good.

If this is unsuccessful despite all of these efforts, it may

at least be possible to prohibit the exhibition.

2. Speed

A trade fair means business and in our experience, most

of the business is done over the first few days, so be

aware that your competitor is expecting already to have

completed a significant amount of business before you

are able to prevent the imitation. So act quickly.

Major courts often have an emergency service at large

trade fairs, which can act quickly and effectively even on

Saturdays. If the manufacturer and attorney work well

together, an injunction can be issued very quickly, some-

times within a day, six days per week.

DECEMBER 2014



/35


3. Proceedings

In cases relating to trade fairs, the courts often make

decisions based solely on your submission. They there-

fore usually issue an order without hearing the other side.

Take advantage of this effect of surprise effect. The in-

junction can be issued by the court officer directly at the

trade fair. If this happens early enough, the infringer will

not be able to perform a lot of business with the imita-

tions. His strategy fails to succeed.

A decisive factor can also be the deterrent effect, be-

cause who would like to have a court officer at their trade

fair stand.

4. Remedies

All intellectual property rights and copyrights can be used

as the basis for an application. In our experience, appli-

cations based on registered protective rights – in particu-

lar marks and registered designs – have the best and

quickest chances of success. If, as so often, the product

for packaging form is important in addition to the design,

the registration of three-dimensional marks should also

be considered. The protection of your product at the

trade fair therefore begins already with careful registra-

tion.

If you do not hold any registered trademark rights, you

can refer to the presence of an anti-competitive violation.

It may also be possible to assert a claim for unregistered

designs or copyrights.

5. Cost

If your application is justified, the costs of the proceed-

ings and the attorneys that you hire will in principle be the

responsibility of the imitator. If, in addition, the imitator is

headquartered outside of the EU, additional legal

measures can be taken in order to secure the costs in-

curred on a preliminary basis all at least to make later

enforcement easier.

Dr. Magnus Hirsch

[email protected]

Christoph Mayerhöffer

[email protected]

DECEMBER 2014



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Descriptive marks: Design instead of trademark?

Very often in practice descriptive names are used for

products and services. This means that the customer

immediately understands from the “brand" what the

product is. The use of descriptions that are in every day

usage in speech is also an approach that is often chosen

for search engine optimization online. In this way, cus-

tomers are of course able to find a television magazine

named “televisionmagazine.com” very easily online.

From a trademark perspective, names of this kind, how-

ever, cannot be protected. This is because names that

are descriptive of the product or service that they relate

to or that are not distinctive are considered to be abso-

lutely barred from trademark protection. Even when the

application is made to the office (either the German Pa-

tent and Trade Mark Office or the Office for Harmoniza-

tion in the Internal Market, which is responsible for Euro-

pean Community trademarks) will check whether there

are absolute grounds for refusal of this kind.

The office will subsequently reject the application for

trademark protection. Users will not receive market regis-

tration and will therefore be unprotected.

For trademark registration, in addition to the simple name

(which may only consist of standards texts symbols), the

registrant may also choose to take the alternative route

of applying for registration of a word and figurative mark.

This does not provide protection for the word component,

which cannot be protected, but the name as a whole –

i.e. together with the graphic elements – can be granted

a certain level of protection.

There are, however, an increasing number of cases in

which such marks have also been rejected (cf. overview

of case law above, 1.2.). The registration practice of

offices is becoming more restrictive in this respect. In

cases like this, the consideration arises of whether a text

can at least be protected as a design in accordance with

the German Design Act or in accordance with the Com-

munity Design Regulation. The hurdle of the absolute bar

on protection is set in a different way for designs than for

trademarks. The different registrations may therefore

have different results in practice.

Requirements for the protection of a design

When the protection in accordance with the German

Design Act or the Community Design Regulation is pos-

sible depends on the concrete individual case. The fol-

lowing, therefore, is intended to provide the basic re-

quirements for protection in accordance with the German

Design Act and the Community Design Regulation:

A design is characterized by the fact that it uses the

characteristics of lines, contours, colors, surface struc-

ture, or the materials of the product itself, or its decora-

tion. This may include any industrial or craft product,

including packaging, features, graphic symbols, and

typographic fonts, as well as details that contribute to a

complex product.1

Important: in order to register a project under the German

Design Act, it must be new and unique. A design is con-

sidered to be new if no identical design has previously

been issued publicly. In any case, the concept of "relative

innovation" applies to designs. According to this concept,

a design can still be registered as "new" if it has already

been registered by the owner a maximum of 12 months

previously.

1 On (the new German) design law overall Schicker/Haug, NJW 2014

DECEMBER 2014



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The prerequisite for being considered unique is that in its

overall impression of the design must be different from

that of older designs. Whether the design is different is

interpreted based on its "individual nature". This does not

require any design result that is beyond the average

ability of a designer.2 In this respect, no qualitative as-

sessment is performed. The question relates more to

quantitative elements. The question of whether a design

is unique is based on observation and comparison as to

whether the appearance of the design is different from

every other example of the previously known form.3

Design protection exists only from the time of registration

in the design register maintained by the German Patent

and Trade Mark Office or the Office for Harmonization.

From the time of registration the design it is protected for

an initial period of five years. The protection can be ex-

tended by five years in each case up to a maximum pro-

tection period of 25 years.

Alternatively, protection based an unregistered communi-

ty design can be considered. No registration is necessary

for an unregistered community design. Protection is cre-

ated simply through being made available to the public. A

design is made public by being issued, offered, all pub-

lished in some other way. In case of an unregistered

design, the project must still be new and unique. The

requirements here of substantially the same as under

German design law. From a procedural point of view it

must be considered that a holder of an unregistered

design must provide proof that it has made public the

sample.4 Protection under as an unregistered community

design is limited to simple protection against imitation. In

addition, the duration of protection is limited to three

years from the first publication.

2 Eichmann/von Falkenstein, GeschmacksmusterG, Section 2 margin note 12. 3 Eichmann/von Falkenstein, GeschmacksmusterG, Section 2 margin note 12. 4Federal Court of Justice, 13.12.2012 – I ZR 23/12

Whether protection by means of a design can provide at

least a kind of "backup protection" in concrete cases can

only be determined specifically on a case-by-case basis.

In practice, however, some cases are known in which

protection of a design under the circumstances has been

successful in case of descriptive names.

Practical tip:

If a text with graphic design is intended to be used as a

trademark but is of a descriptive nature, the option of

also protecting this work as a design should be consid-

ered as an early stage. If, therefore, it becomes apparent

within 12 months of the time of first publication or of the

application that protection as a mark is going to be re-

fused, if necessary, protection as a design can provide at

least a certain level of basic protection. We will gladly

advise you on the details.

Stefan C. Schicker, LL.M

[email protected]

DECEMBER 2014



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COMPETITION LAW

Negative product assessments and possible legal

defense

In many cases, product tests offer consumers a good

opportunity for orientation. This applies in particular in

case for product markets where it is almost impossible to

get a good overview of the selection, such as in particular

the area of groceries. Products that receive good as-

sessments represent a win-win situation that calls for

consumers and for the manufacturer involved. In case of

work test results, on the other hand, manufacturers are

often threatened with damage to their image that could

endanger their existence.

In cases of this kind ("worst-case scenario“), the compa-

nies affected should carefully weigh up further counter-

measures. In addition to a positive image campaign, in

particular through successful public relations work, legal

steps can also be considered on an individual basis. The

fact that manufacturers can defend themselves against

well-known institutions such as Stiftung Warentest was

impressively demonstrated last year in the "Ritter Sport”

case.

1. Extent of the freedom of the tester’s opinion

The legal evaluation of the product test consists of

weighing the basic right of a product tester to freedom to

express his or her opinion (Article 5 (1) German Basic

Law) and the right to carry on an established business,

which is also constitutionally protected (Article 12 (1)

Basic Law). The right to carry on an established business

includes everything relating to the operation that makes it

possible for the business to develop and to be active on

the market and therefore makes up the economic value

of the operation as an existing unit.

During this weighting process, the content of the test

assessment is to be determined. Accordingly, each

statement made is to be classified as either a factual

statement or as a value judgment:

Factual statements are characterized by the fact that

they all based on evidence. In contrast, value judgments

are statements that all characterized by elements of

opinion, views, or thoughts and can therefore not be

proven to be correct or incorrect. The benchmark for

classification as claims the fact that can be checked or as

a value judgment that cannot be checked is the under-

standing of an unbiased and informed public. The signifi-

cant criterion here is the wording of the statement, which

is not to be taken in isolation but rather within the full

context.

The scope of protection of the freedom of opinion is

broad. Factual statements that are proven to be untrue,

however, are not included in the scope of protection of

freedom of opinion. Value judgments are also not pro-

tected when they cross the limit of "abusive criticism“, i.e.

they are no longer based on factual argument, but are

primarily aimed at belittling the supplier in question or its

products.

2. Legal requirements for a test publication

The publication of a comparative product test is generally

permissible if the test is done without any competitive

intention on the part of the tester and the inspection is

performed in a neutral and knowledgeable way and with

an effort at objective accuracy. The inspections by institu-

tions such as Stiftung Warentest must therefore be con-

sidered different from tests that product manufacturers

arrange and perform themselves in their own competitive

interests.

DECEMBER 2014



/35


With regard to the appropriateness of the testing meth-

ods, the selection of the test items, and the presentation

of the inspection, legal precedence grants testers exten-

sive freedom of opinion. For the investigation to be con-

sidered objective, the testing methods must be recog-

nized or at least justifiable. In addition, the product tester

must ensure that the investigation performed is objective,

i.e. that it is performed by qualified staff with a certain

level of expertise. If this objectivity is not insured, the limit

of what is permissible has been passed, because criti-

cisms of products may not be expressed arbitrarily.

In the presentation of the test results, it must also be

ensured that these are neutral and that they cannot cre-

ate an incorrect overall image for the average reader.

Therefore the presentation must not be performed in a

distorting or misleading manner. If necessary for under-

standing, statements must include and explanatory sup-

plement.

3. "Secondary burden of proof” on the tester in

court proceedings

If a negatively affected company decides to go to court, it

must prove, unless a case of abusive criticism is given,

the falsehood of the disputed factual claims.

In any case, the product tester may be subject to "sec-

ondary obligation to provide evidence and burden of

proof“. A plaintiff cannot be reasonably expected to justify

him/herself "out of the blue” and in doing so have to

make public circumstances relating to its business area

in a scope that could be avoided in case of proper de-

fense by the product tester. If a product tester does not

comply with this secondary obligation to provide evi-

dence and burden of proof, the court will assume that the

tester’s results are inaccurate. The "secondary obligation

to provide evidence and burden of proof” of the tester is

not yet created as a result of the fact that the plaintiff

disputes the accuracy of the test result overall. Rather,

the plaintiff must demonstrate substantiated doubts about

accuracy.

In the legal dispute between Alfred Ritter and Stiftung

Warentest, the crucial question was whether the sub-

stance piperonal processed in the chocolate was chemi-

cally manufactured, or whether it is a natural flavoring

within the meaning of Article 16 (4) EU Flavoring Regula-

tion (no. 1334/2008/EU). Ritter submitted that it could not

prove within the court proceedings how the substance

piperonal is obtained because it is obtained by suppliers

and cannot be published because it is an operational

secret. In any case, Ritter submitted to the court a guar-

antee by the supplier stating that piperonal was made of

natural flavors and was not a chemical product.

The court found this substantiated submission by the

plaintiff to be sufficient in order to presume a secondary

obligation to submit evidence and burden of proof on the

part of the defendant, Stiftung Warentest.1 The latter then

had to provide evidence and to prove how it obtained the

positive proof that the piperonal flavoring included in the

chocolate was chemically manufactured and not naturally

obtained. Stiftung Warentest, however, was not able to

provide the proof because it had only suspected during

the product test that the piperonal substance proven to

be in the chocolate was chemically produced without

informing the readers that this was only a suspicion.

4. Further case studies from judicial practice

Abusive criticism was assumed, for example, in a case in

which a restaurant was described as follows: “the restau-

rant’s prices are out of this world. The management

drives the guests to run riot with its policy of targeted

understaffing. It is an act of extreme daring to hand itself

1 Munich Higher Regional Court, 09.09.2014 – 18 U 516/14.

DECEMBER 2014



/35


over to fast food providers in the daylight robbery catego-

ry.“2

The description of a country hotel on a hotel evaluation

portal as a "hen coop", on the other hand, was not con-

sidered to be abusive criticism.3 In other contexts, how-

ever, the phrase "hen coop" could well be regarded as

abusive criticism.

The legal assessment of a process as relevant under

criminal law does not initially constitute a statement of

fact, but a value judgment.4 A value judgement cannot be

assumed, however, if the focus is not on the legal as-

sessment of an existing state of affairs, but rather in-

cludes the legal appraisal of a specific event, such as, for

example, in the formulation "hygienic shortcomings".

2 Frankfurt Higher Regional Court, 24.11.1989 – 6 W 122/89. 3 Stuttgart Higher Regional Court, 11.09.2013 - 4 U 88/13 4 Düsseldorf Regional Court, 09.01.2013 – 12 O 392/11.

5. Different claims by the company at issue

In case of a legal infringement, the affected company has

a claim to compensation for damages, injunctive relief

and removal. Under certain conditions, certain counter-

statement claims are possible, with it being possible to

place the counterstatement at the same location where

the infringing statement was made. The counterstate-

ment is a statement by the affected party itself. In case of

an unpermitted factual claim, a company, however also

request a cancelation or correction by the tester itself. In

comparison with a counterstatement, this is a much more

effective instrument because the tester must state public-

ly that the previous statement was untrue.

Dr. Thomas Haug, LL.M. (Exeter)

[email protected]

DECEMBER 2014



/35


IT & DIGITAL BUSINESS

New Consumer Law for the online trading sector –

What is actually new? What are the new information

obligations? How has the right of withdrawal

changed?

A. INTRODUCTION

The German Act Implementing the EU Directive on Con-

sumer Rights of 25 October 2011 has taken into effect on

13 June 2014.

B. WHAT IS REALLY NEW?

1. Confusing regulations

It is not really anything new that consumer rights regula-

tions are confusing. The changes do, however, exacer-

bate the confusion here quite a bit: certain regulations

are not applicable to certain industries (e. g., travel ser-

vices, transportation, grocery deliveries, § 312 para. 2 of

the Bürgerliches Gesetzbuch neu (the Civil Code New,

the “BGB NEW”)). The law establishes — to an even

greater extent than it did before — various standards for

information obligations in the e-commerce sector in a

more narrow sense: from distance sales, to formation of

sales contracts outside of one’s business premises, to

retail stationary (§ 312a et seq. BGB New).

2. Incorporation of retail stationary

What is really new, however, is that certain — both

amended or new — regulations are now expressly appli-

cable to the retail stationary trade (§ 312a BGB New) as

well.

paid-for services shall have to be expressly agreed to

(e.g. transport, assembly services, etc.).

consumers must have a standard free of charge

payment option (already established jurisprudence for

some time now). To the extent that costs for any oth-

er payment method are incurred, such costs may not

exceed the costs the enterprise incurs for using the

payment method.

individual traders making contact by telephone for

sales purposes must disclose (i) their identity at the

beginning of the telephone call and (ii) the business

nature of the call. This shall apply independent of the

quite narrow conditions for the legality of such tele-

phone calls.

no fees over and above those for the mere use of the

telecommunication service may be charged for ser-

vice hotlines. Traders will, therefore, have to offer ei-

ther a toll-free or local number.

3. Information obligations for the retail stationary

trade

In addition to the information obligations for distance

sales and for the formation of sales contracts outside

one’s business premises, certain new information obliga-

tions shall now be applicable to and obligatory for retail

stationary (§ 312 a para. 2 BGB New in conjunction with

Article 246 para. 1 EGBGB New).

DECEMBER 2014



/35


4. Certain information to become constituents of

contracts

It is new that certain information obligations shall now

automatically become a constituent of contracts for both

distance sales contracts and sales contracts being

formed outside one’s business premises (§ 312 d para. 1

BGB New).

5. Information obligations for mobile websites

and smartphone apps

Information obligations are being made easier for dis-

tance sales contracts through any means of communica-

tion that has only limited presentation options (such as

mobile websites or smartphone apps). What’s new?

Moving forward, informing consumers of the material

qualities of the goods or services, the identity of the en-

terprise, the total price, the existence of a right of with-

drawal, the term of the contract, and the terms and condi-

tions governing any termination of contract will be suffi-

cient.

6. Delivery restrictions and methods of payment

What’s new for electronic business transactions? The

following: traders shall — by no later than the com-

mencement of the ordering process — have to clearly

articulate whether there are any delivery restrictions and

what methods of payment the trader accepts.

C. CHANGES TO THE RIGHT OF WITHDRAWAL

The changes to the right of withdrawal are even more

extensive. And here is an overview:

1. No more return right

Up to now, the statutory right of withdrawal could be

substituted with a so-called right of return. This right of

return will no longer exist as of 13 June 2014.

2. Reforming statutory exceptions to the right of

withdrawal

At present, applicable law already provides for numerous

situations where consumers are not supposed to be

entitled to any right of withdrawal. The changes incorpo-

rate additional new exceptions to the right of withdrawal

(§ 312 g para. 2 sent. 1 BGB New) and therefore serve to

implement the final catalogue set forth in the Consumer

Rights Directive.

What is new here is the exception for alcoholic beverage

supply agreements, with prices having been agreed to as

of the date the agreement had been entered into, but

where (i) beverages can be supplied by no earlier than

thirty (30) days of the agreement having been entered

into and (ii) the current value of the beverages are de-

pendent upon market fluctuations that the trader has no

influence over.

DECEMBER 2014



/35


3. Single withdrawal period

Commencing as of 13 June 2014, there shall be a single

withdrawal period of fourteen (14) days throughout Eu-

rope. Germany has long had two withdrawal periods: (i) a

general fourteen (14) day period and (ii) an extended

period of one (1) month in the event traders did not —

immediately after the formation of a contract — notify

consumers that they had a right of withdrawal.

4. No more indefinite right of withdrawal

Present legislation provides for the possibility that the

right of withdrawal shall be indefinite in the event that

traders have not duly notified consumers of their right of

withdrawal. But the new legislation provides for consum-

ers’ right of withdrawal lapsing by no later than twelve

(12) months and fourteen (14) days from receipt of goods

(distance sales) or of the formation of the contract.

5. Declaration of withdrawal

Consumers shall no longer have to declare their with-

drawal in written form, as has hitherto been the case

(§ 355 BGB). An unambiguous declaration will suffice;

there need not be any reason for the withdrawal. A with-

drawal by merely returning the goods shall no longer be

possible, save for where the parties have expressly

agreed to this. Sending the withdrawal in due time shall

be sufficient for complying with the deadline here.

6. Obligation to provide a sample withdrawal form

The new regulations provide for traders being obligated

to provide consumers with a so-called sample withdrawal

form for distance sales and for the formation of sales

contracts outside their business premises (§ 312 d para.

1 sent. 1 BGB New in conjunction with Article 246 a § 1

para. 2 sent. 1 no. 1 EGBGB New). This shall have to be

done in a way adapted to the method of distance com-

munication used. Traders can provide consumers with

the withdrawal form on their website, such that it is capa-

ble of being filled out by consumers and electronically

transmitted to the online retailer. Should consumers use

the sample withdrawal form provided online, then traders

shall have to confirm receipt of withdrawal without undue

delay using some permanent medium (in an email, say, §

356 para. 1 sent. 2 BGB New).

7. Cap on shipping/return shipping costs

The present legal situation provides for traders being

obligated to reimburse consumers for the full amount of

any shipping costs in the event of an effective withdraw-

al.

The new legislation does clarify that traders have to re-

imburse shipping costs (§ 357 para. 2 sent. 1 BGB New),

but the amount of this reimbursement is capped. Should

any consumer opt for a shipping method that is more

expensive than the standard shipping offered by the

trader, then that consumer shall have to bear any addi-

tional costs in the event they exercise their right of with-

drawal (§ 357 para. 2 sent. 2 BGB New).

DECEMBER 2014



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Another new development here is that consumers shall

have to bear any return shipping costs regardless of the

goods’ value. Lawmakers are, specifically, repealing the

€ 40.00 clause that has existed up to now.

8. Speedier settlement of withdrawals

Under the new legislation, goods must be returned within

fourteen (14) days (§ 357 para. 1 BGB New) of receipt of

a withdrawal notification. Furthermore, the purchase

price has to be reimbursed by using the same method of

payment that was used to render payment, unless other-

wise agreed upon with the consumers (§ 357 para. 3

BGB New).

9. Withdrawal right

Under the new legislation, traders shall have a withdraw-

al right regarding refunds until such time as the goods

are returned to them or, at minimum, until such time that

it has been evidenced by the consumer that s/he has

sent the goods (§ 357 para. 4 BGB New).

10. Compensation for value lost

In future, consumers shall have to pay compensation for

value lost only if the goods have been handled in a man-

ner that was not necessary for inspecting the quality of

the goods (§ 357 para. 7 BGB New). The new legislation

fully dispenses with any compensation for value lost on

account of the goods having been used.

It also clarifies expressly that consumers shall not have

to render any compensation for value lost in the event

they withdraw from digital content supply agreements.

D. CONCLUSION

In the confectionery industry, the following also applies:

All market participants who are liable for forms of con-

tracts or interactive websites where orders can be placed

will have to use their best efforts and the greatest of care

to adjust their services to the new legal situation. The

e-commerce platform analyses that have already been

conducted show that the “devil” is in the detail here, as is

so often the case.

Elisabeth Noltenius, LL.M [email protected]

DECEMBER 2014



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MEDIA AND ENTERTAINMENT LAW

Guideline on product placement

Product placement is customary primarily in the film and

television industry, however it is only a legitimate practice

under certain conditions. In this process, products and

services are integrated into broadcasts. Product place-

ment after all means "the effective tendency to blur the

boundaries between reality and advertising" (Rhineland-

Palatinate Higher Administrative Court, 22.8.2013, Case:

2 A 10002/13.OVG).

Particularly in the confectionery industry, integrating

products into films and television programming is a popu-

lar way of promoting sales. For example, various Ferrero

products could be seen in the display window of "Spät-

kauf“, a kiosk and meeting place of members of the show

"GZSZ" on an advertising poster.

Another example is the Bahlsen chocolate cookie "Pick

up!", which was seen in the show "Dschungelcamp", and

in the Matthias Schweighöfer comedy "Schlussmacher".

Product placement is defined as the explicit mentioning

or display of goods, services, names, trademarks, activi-

ties by a manufacturer of goods or a service provider in

broadcasts in exchange for payment or other similar

consideration with the aim of promoting sales. The provi-

sion of products or services without payment is product

placement if the goods or services in question are of

significant volume. In principle, product placement is

impermissible, as is thematic placement and surreptitious

advertising. This guarantees the separation between

editorial content and advertising ("separation require-

ment"). In any case, Section 7(7) German Interstate

Treaty on Broadcasting permits exceptions from this

prohibition.

1. Requirements for permissible product placement

Section 7(7) Interstate Treaty on Broadcasting eases the

strict requirement of separation between programming

and advertising somewhat. Release from the separation

requirement, however remains limited to a few excep-

tions, and these are subject to tight conditions.

a) Maintenance of editorial responsibility (no. 1)

In addition, maintenance of editorial responsibility and

independence with regard to content and broadcasting

space must still be guaranteed. The significant content of

product placement, i.e. the subject matter, as well as the

type of placement, must be approved by the editorial

staff. Those responsible for editing must inform the

broadcaster whether product placement will take place

and if so which products and services are involved.

DECEMBER 2014



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b) No promotional references (no. 2)

In order to prevent a further easing of the separation

requirements, no direct promotional references to the

acquisition of products and services can be made. This

means that the trademark of the product, for example a

refrigerator, may be visible in a film, but the quality of the

products shown may not be explicitly praised or high-

lighted in a manner that does not correspond to everyday

communication. The precise separation here can be a

great challenge.

c) No emphasis (no. 3)

In addition, the product or service cannot be particularly

emphasized. This standard is intended to protect the

core of the principle of separation and has two protective

aims. "Firstly, it is intended to protect the freedom of the

media, as well as to maintain objectivity and neutrality of

the media with regard to competition in the market as

prerequisites for diversity of opinion in programming,

secondly it serves to protect the viewers who approach

editorial content in a more trusting manner than promo-

tional messages.“ (Rhineland-Palatinate Higher Adminis-

trative Court, 22.8.2013, Case: 2 A 10002/13.OVG).

Unlike prerequisite no. 2, emphasis does not entail ex-

plicit sales promotion by the praising of products and

services, but rather the creation of an impression of this

kind by other means. This can, for example, take place in

a street scene by means of the insertion of an advertising

panel.

Product placement must always be included in the flow of

the scene, so the product cannot be emphasized more

than is necessary for the performance of the scene. For

example, the symbolic identification of a protagonist with

the brand is not permitted because an endorsement of

this kind results in that prominent person’s reputation to

be transferred to the product or service.

2. Low-value products

In accordance with the legal definition of Section 2(2)(11)

Interstate Treaty on Broadcasting, the placement of low

value products made available free of charge cannot be

considered product placement because in any case,

there is no risk of a direct influence on the program. Oth-

erwise a legitimate financing source and opportunity for

cost savings would be removed. The difficulty is, howev-

er, in determining when the product is to be classified as

of low value. In order to prevent potential abuse, a rather

low threshold appears necessary. A relative limit of 1%

could be envisaged, or an absolute limit of EUR 1.000 (in

accordance with the ARD/ZDF Advertising Guideline of

March 12, 2010, Article 9.1).

In the determination of low value, the value of the product

or service itself is not to be used as a basis, but rather

the rental costs, because expensive items, e.g., cars or

houses, are often not purchased during the working on a

film. These costs, however, are often very difficult to

estimate as it would need to be determined which costs

would have been incurred and for what period of time if

the item had not been made available free of charge.

DECEMBER 2014



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If the low value limit is not exceeded, there is still the risk

that the placement may constitute (prohibited) surrepti-

tious advertising.

3. Identification obligations

Section 7(7)(3) Interstate Treaty on Broadcasting has

now created an identification obligation for product

placement. This is intended to ensure transparency. This

can, for example, be done by means of an appropriate

caption at the beginning or end of the program.

Dr. Ulrich Reber

[email protected]

DECEMBER 2014



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CUSTOMS LAW

Recipes – A bitter customs aftertaste?

Globalization in the confectionery industry began a long

time ago. Production no longer takes place exclusively in

Europe, but internationally. The products have for a long

time been based on their uniqueness, which relates to

"secret" recipes. If the production of the confectionery

goods or individual raw materials, for example flavorings,

is outsourced, the recipes must be passed on to the

manufacturers. In concrete terms, this means that the

German confectionery company has its products pro-

duced by a contractor, for example in Asia. In order to do

this, the company provides the Asian manufacturer with

the required recipes. The completed products are then

sent by the manufacturer back to Germany and are im-

ported and marketed in Germany.

When goods are imported from a third-party country, they

are subject to customs clearance, i.e., customs duties

must be paid on them. In order to determine import du-

ties, in accordance with the EU Customs Code, the value

of the goods are decisive. The underlying value of the

goods should be the objective value of the imported

goods, with the purchase price to be used as a basis.

The purchase price is not always everything. In accord-

ance with Article 32 Customs Code, value-increasing

components are to be taken into account in the customs

value. This includes, for example, production equipment

provided by the purchaser to the manufacturer.

What does this have to do with recipes? Contributions

include not only physical production equipment, but also

“intellectual contributions", such as expertise, sketches or

production plans. This also includes the corresponding

recipes for food items.

If the recipe is made available to a manufacturer in a

third-party country free of charge or at a reduced cost, it

must be added to the customs value. In case of intellec-

tual contributions, however, unlike contributions of physi-

cal equipment, this applies only if the development of the

formulation did not take place in the EU. This could be a

loophole for you because if you have developed the

formulation exclusively in the EU, you can provide it free

of charge to the manufacturer, without this having a neg-

ative effect on the customs value. If, however, develop-

ment work (partial performance) also took place in a

third-party country, for example in the group headquar-

ters in Switzerland, the intellectual contribution is initially

relevant with regard to customs value and would have to

be included. In case of a recipe developed partially in the

EU, a subsequent step would be to agree with the cus-

toms administration on which portion of which portion is

relevant here with regard to the customs value, also with

regard to international distribution of the completed prod-

uct.

Sven Pohl

[email protected]

DECEMBER 2014



/35


New information on the capping of taxes on electrici-

ty and energy – Secure your tax relief!

The production of confection in Germany is considered

energy intensive. Legislators, however, already granted

the companies an exemption for up to 90% of electricity

and energy taxes in 1999 ("capping").

As a result of concerns based on European law against

the German exemption provisions, this had to be re-

drafted in 2012. In doing so, in particular the additional

requirement was adopted that the companies are obliged

to operate an energy management system (in general in

accordance with DIN EN ISO 50001).

The question of how this system is to be designed, how

the proof is to be submitted, and in particular how the

transition rules for 2013 and 2014 should be arranged

was regulated in more detail in mid-2013 in the Capping

Efficiency System Regulation. In the following, we would

like to briefly inform you of the current item of corre-

spondence from the German Federal Ministry of Eco-

nomics and Technology, as well as the draft amendment

of the Capping Efficiency System Regulation:

1. Federal Ministry of Economics and Technology

correspondence

In circular letter dated October 30, 2014, the Federal

Ministry of Economics and Technology clarified that proof

of the introduction of the energy management system,

contrary to previous statements, can still be submitted for

the application year 2013 in 2014. In this case, the in-

spection by the certifying body, however, will not be per-

formed on-site but rather based on documents. For the

applicants this also means that they must submit an

affirmation in lieu of oath along with the application for

capping. This affirmation has to confirm that the require-

ments had already been met in application year 2013.

For application year 2014, the proof of the introduction of

the system, on the other hand, must be submitted to the

certifying body by the end of the application year, and the

on-site inspection must also be performed in 2014. If this

has occurred, the issuing of proof by the authority can

take place even after the end of the application year.

2. Capping Efficiency System Regulation1 Draft

Amendment

The previous Capping Efficiency System Regulation

included in some areas included unclear provisions in

some areas, which in practice have repeatedly led to

uncertainty in different administrative practices. the

change is intended to clarify the requirements and there-

fore ensure uniform application. In addition, for small and

medium-sized businesses, the provisions have been

eased to make the provision of proof easier, for example

it should be it will be sufficient if 95% of the total energy

consumption is recorded.

Sven Pohl

[email protected]

1 Draft of the Federal Ministry for Economics and Energy on a Regulation for the Amendment of the Capping Efficiency System Regulation of September 10, 2014

DECEMBER 2014



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COMMERCIAL AND DISTRIBUTION LAW

For activities in other countries: Be cautious about

the agreement on legal venue or arbitration!

Confectionery manufacturers sourcing products such as

cocoa or cane sugar from outside Europe or distribute

goods there, should ensure that the provisions on juris-

diction in their contracts fulfill the special requirements of

these circumstances. Relatively often, sales or distribu-

tion contracts provide without much reflection that the

domestic courts should decide any dispute. If accepted

by the contractual partner, it even appears to be a small

negotiating victory. In fact, this can be a battle that is not

worth winning, however, because while in the EU, judg-

ments are recognized by both sides, this is far from true

beyond the European borders. A German decision, for

example, cannot be executed in many African States or

in the Middle East, or even in Russia. If a dispute occurs,

the question arises of whether it actually makes sense

then to make a complaint at all. There are often good

reasons not to agree to a legal venue at the headquar-

ters of the contractual partner because the rule of law in

the relevant country is not fully developed. In such cases,

arbitration can provide a way out. Boards of arbitration

are privately organized courts, for example, by the Inter-

national Chamber of Commerce (ICC).

An important advantage of arbitration is the global en-

forceability of judgments ("arbitral awards"), which may

be issued by these boards of arbitration. More than 150

States have entered into an agreement obliging them to

accept foreign arbitral awards and to permit their en-

forcement. A board of arbitration, however, has respon-

sibility only if the parties have agreed to this. Since an

agreement of this kind is usually no longer possible after

a dispute has arisen, it should be considered when con-

tracts are being entered into with suppliers, customers, or

distribution partners (in particular those outside Europe)

whether or not an arbitration clause should be included.

Practical tip:

Do not draft an arbitration agreement without profession-

al support or use an “official” clause template by a recog-

nized arbitration institution. In practice, it must be ob-

served that a significant portion of arbitration agreements

is defective because the responsible board of arbitration

is appointed in an ambiguous manner. This can result in

errors that cannot be rectified at a later time.

Oliver Korte

[email protected]

DECEMBER 2014



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ANTITRUST LAW

The German Federal Cartel Office intensifies its in-

vestigation activities

1. Introduction

Antitrust law as a law for large corporations - those times

are long gone. For some time now, the Federal Cartel

Office has also been investigating the area of medium

size companies with regard to uncovering anticompetitive

agreements and conduct. The significant fines that have

been imposed recently against medium-size companies

send a clear message.1 In this respect, it is also essential

for the management of a medium-sized company to keep

an eye on antitrust law for example with regard to ex-

changing information with competitors, entering into

collaborations, and the structuring of sales channels.

This article therefore illustrates the main requirements of

antitrust law and some cases that have affected compa-

nies in the confectionery industry in the past. The focus

here is on the area covered by Section 1 German Act

against Restraints of Competition/Article 101 TFEU,

which prohibits anticompetitive agreements and conduct.

2. The cartel prohibition under Section 1 Act

against Restraints of Competition

In accordance with Section 1 Act against Restraints of

Competition, agreements between companies, resolu-

tions by associations of undertakings, and concerted

practices, which are aimed at or bring about a preven-

tion, limitation, or distortion of competition are prohibited.

1 See for example the total of EUR 338 million of fines imposed by the Federal Cartel Office to some 20 companies, which were part of the "sausage cartel", Federal Cartel Office Press Release of July 15, 2014.

This covers in the broadest sense agreements or con-

certed practices between competitors, i.e. companies at

the same level in the market ("horizontal agreements"),

as well as agreements between companies at different

levels in the market, i.e. for example between manufac-

turers and distributors ("vertical agreements”).

With regard to the applicability of the cartel prohibition,

the first thing that is required is the presence of an

agreement for concerted practices. The term "agree-

ment" is to be interpreted broadly. In addition to contracts

in the literal sense, “gentlemen’s agreements” are also

included, i.e. agreements that create an obligation be-

tween the parties with regard to their market conduct,

including such that do not rise to having a binding effect

under civil law.2 All that is necessary for an agreement to

be considered to exist is an actual binding effect and an

intention aimed at this. This does not include in particular

unilateral measures, for example, recommendations.

An agreement contrary to antitrust law is the same as

"concerted practices". The case law defines concerted

practices conduct as "a form of coordination between

companies … that may not have reached the level of the

conclusion of an agreement in the actual sense, but that

replaces competition, which is associated with risks, with

a practical cooperation. Concerted practices therefore by

their very nature do not meet all of the factual require-

ments for an agreement, but can also result in particular

from coordination manifesting itself in the conduct of the

participants.“3

2 ECJ, 15.7.1970 – C-41/69 [1970], 661, paragraph 112 – ACF Chemiefirma; General Court, 06.04.1995 – T-141/89 [1995], II-791, paragraph 95 – Tréfileurope; Immenga/Mestmäcker, Wettbewerbsrecht GWB [Competition Law Act against Restraints of Competition], 4th ed., 2007, Section 1 margin notes 83 et seqq. 3 ECJ, 14.7.1972 – C-48/69 [1972], 619, paragraphs 64, 67 – ICI.

DECEMBER 2014



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A resolution by an association of undertakings that is

followed by a company and therefore can be considered

"concerted" can also be sufficient.4

In addition, in accordance with Section 1 Act against

Restraints of Competition, it is also necessary that the

agreement or concerted practices aims at or brings about

a restriction of competition between companies that are

independent of each other. A restriction on competition

means limitation of competitive freedom of action as a

provider or consumer. For companies within a group of

companies, an intra-group exemption will apply. Re-

strictions on competition within groups of companies are

not relevant under antitrust law. Parameters relevant to

competition must be affected by the agree-

ment/coordination that is contrary to antitrust law, for

example sales, prices, consumers, territories, product

range, invitations to tender, etc. This is the area where

the “hardcore cartels" occur, i.e. in particular in the area

of price, territory, and quotae agreements. This type of

cartel agreement has a particularly damaging effect on

competition and penalties are imposed accordingly..5

Of particular practical importance and less obvious, for

example, are market information systems. Market infor-

mation systems cause concerns under antitrust law if

they include an agreement between companies to ex-

change information that is relevant to competition, which

would otherwise be kept confidential, between the partic-

ipants, whether this takes place directly or via a third

party.6 A benchmarking system that is operated by an

industry association for members can also result in a

4 Federal Court of Justice, 14.82008 – KVR 54/07 - WuW/E 2408, 2415 – Lottoblock. 5 cf. most recently Press Releases of the Federal Cartel Office of January 13, 2014 and April 2, 2014 (beer cartel) and July 15, .2014 (sausage cartel). 6 Federal Court of Justice, 29.1.1975 – KRB 4/74 – WuW/E 1337, 1342 – Aluminum – Semi-finished products; Federal Court of Justice, 18.11.1986 – KVR 1/86 – WuW/E 2313, 2315 – Baumarkt-Statistik; Im-menga/Mestmäcker, loc.cit., Section 1, margin notes 303 et seqq.

restriction on competition in the form of unpermitted dis-

closure of confidential information ("hidden competition").

A differentiation must be made in this respect between

"identifying" and "non-identifying" procedures. Identifying

procedures are those in which individual transactions

between the competitors are disclosed. Since this affects

the core of hidden competition, Section 1 Act against

Restraints of Competition may be breached. In contrast,

"non-identifying procedures" are those in which it is not

possible which is not possible to draw an inference about

individual business transactions and are therefore not

objectionable under antitrust law.7

Finally, the agreement or concerted practices must have

a noticeable external effect. This does not include

agreements that result in only an insignificant external

effect. The agreement must therefore be of a kind that

would lead to a noticeable, practically significant change

in market conditions.8 In order to make this more con-

crete, following the 2001 "de-minimis" notification by the

Commission,9 the Federal Cartel Office also issued a de-

minimis notification in 2007. According to both notifica-

tions, the authorities will generally not initiate proceed-

ings against parties to an agreement that may be that

may be anticompetitive if, in case of horizontal agree-

ments, the market share of the companies involved does

not exceed 10%. In case of vertical agreements, the

threshold is 15%. If there are "network effects" in place,

i.e. parallel contracts, the market share threshold is 5%.

However, the notifications do not apply to intentional

anticompetitive restrictions on competition, i.e. in case of

hard-core cartels such as price, quota, or territory

agreements. These can be pursued irrespective of

7 Bechtold, loc.cit., Section 1 margin note 34 with additional references 8Federal Court of Justice, 23.2.1988 – KRB 4/87 – WuW/E 2469, 2470 – Eyeglass frames; Federal Court of Justice, 13.1.1998 – KVR 40/96 WuW/DE-R 115 – Car Partner. 9 European Commission, 22.12.2001 – 2001/C-368/07 – OJ EC 2001 C-368/13; the Commission published a new version of the de-minimis notification on June 26, 2014, the content of which is largely the same, cf. European Commission C(2014)4136 final.

DECEMBER 2014



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whether the aforementioned thresholds have been

reached. In case of vertical agreements, the market

share thresholds do not apply in every case. Rather, in

the case of resale price maintenance, restrictions on

sales territories, division of customers, or limitations on

active or passive sales to end customers, the de-minimis

notification is inapplicable and the affected companies

cannot refer to the fact that the actions are not noticea-

ble.10

Anticompetitive agreements can in principle occur at two

levels, on the one hand at the horizontal level and on the

other hand at the vertical level.

Horizontal relationships relate to companies that are

active in the same market and at the same level in the

market. These are therefore agreements between current

and potential competitors.

Vertical relationships affect companies at different levels

in the value creation chain, in particular therefore manu-

facturers, wholesalers, retailers.11

In general agreements

in the horizontal relationship are considered as critical,

while agreements in the vertical relationship can also

have the effect of promoting competition.

10 cf. Article 4 Commission Regulation (EU) No 330/2010 of 20 April 2010, OJ EC 2010 L 102/1 ("Vertical Blocks Exemption Regulation“). 11 cf. for example Düsseldorf Higher Regional Court, 13.11.2013 – VI-4 (Kart) 11/13 – WuW/DE-R 4118 - Bathroom fittings

Most "hardcore cartels" have originated in horizontal

relationships. While cartel agreements of this kind are

generally seen as damaging and therefore no exemption

in accordance with Section 2 Act against Restraints of

Competition (or Article 101(3) TFEU) can be considered,

there are forms of horizontal cooperation between com-

panies that are to be considered in a different way This

includes cooperation in the area of research and devel-

opment, “specialization agreements”, or non-compete

agreements in the context of corporate acquisition con-

tracts.

Vertical agreements include agreements hat are entered

into by companies that are not active at the same market

level. In practice, these are mostly distribution systems

that have been set up by the manufacturer of a certain

product and that then are binding on the companies in

the subsequent stages of the market (wholesaler, retail-

ers). Such distribution systems – and other vertical

agreements – often have the effect of promoting competi-

tion because they result in a more efficient distribution of

goods in the relevant markets, which is why an exemp-

tion is more often considered in this area. A differentia-

tion is to be made here between simple distribution sys-

tems and selective distribution systems. In case of the

latter, the manufacturer selects distributors for a given

product in accordance with certain criteria. Here, it is

regularly assumed that a restriction on competition does

not exist or is outweighed by the procompetitive effects of

such an arrangement. A prerequisite here, however, is

that a selective distribution system is indeed necessary

for the type of product in question and that the sysftem is

fully and coherently implemented.12

12Karlsruhe Higher Regional Court, 25.11.2009 – 6 U 47/08 Kart. – WuW/DE-R 2789 – School backpacks; cf. also Federal Cartel Office, Case report of 27.5.2014 – B 2 – 52/14.

DECEMBER 2014



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Vertical agreements are also, however, subject to re-

strictions under antitrust law. In particular if a vertical

agreement contains so-called "core restrictions",13

it is to

be assumed that it is contrary to antitrust law, which

results in corresponding penalties, including fines.

The restrictions prohibited in distribution contracts in-

clude, without taking into consideration market share

thresholds:

- Resale price maintenance agreements

This is a contractual obligation, whether it be direct or

indirect, according to which the manufacturer sets,

the prices at which the acquired goods can be sold on

to the next level by a wholesaler/retailer. In contrast,

nonbinding price recommendations are not consid-

ered harmful under antitrust law, as long as they are

actually nonbinding and are not made virtually binding

through the exercise of pressure. The same applies in

principle to “maximum price agreements", i.e. cases

in which the purchaser enters into a contractual

agreement with the supplier that it will not sell the

goods to customers above a certain price limit. Maxi-

mum price agreements of this kind are permitted un-

der antitrust law in principle, Article 4(a) Vertical Block

Exemption Regulation.

13cf. Article 4 of Commission Regulation (EU) No 330/2010 of April 20, 2010 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of vertical agreements and concert-ed practices, OJ L 102/1 ("Vertical Block Exemption Regulation“).

- Restrictions on sales territories

In principle, the supplier is allowed to deliver beyond

its sales territory. Exceptions exist under Article 4(b)

of the Vertical Block Exemption Regulation. However,

these apply in particular for the restriction on "active

sales" outside of the distributor’s own sales territory

to customer groups that the manufacturer/wholesaler

has reserved for itself or has assigned to another

contractual partner. “Active sales” refers to active

promotion to customers or maintaining distribution

centers in territories that are assigned to another dis-

tributor. A restriction on purely reactive, i.e. passive,

sales to respond to inquiries from customers from

other sales territories, however, is impermissible. In

addition, according to Article 4(b)(iii) Vertical Block

Exemption Regulation, it is also permitted to prohibit

suppliers operating within the selective sales system

from supplying traders who do not belong to the se-

lective sales system.

- Restriction on sales to end consumers

Any limitation on sales to end consumers, whether

active or passive, is not permitted. This also applies

within a selective distribution system, Article 4(c)

Vertical Block Exemption Regulation.

If clauses of this kind are included in sales agreements,

the contractual parties cannot rely on an exemption by

way of the Vertical Block Exemption Regulation. Accord-

ingly, Section 1 Act against Restraints of Competi-

tion/Article 101 TFEU apply without restrictions. As a

result of the fact that the possibility of an individual ex-

emption in accordance with Section 2 Act against Re-

straints of Competition or Article 101(3) TFEU is not

generally considered, it should be presumed that the

corresponding clauses are contrary to antitrust law.

DECEMBER 2014



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3. Practical examples

Companies in the confectionery industry – with the ex-

ception of sugar manufacturers – have not yet been at

the center of investigation activities by the Federal Cartel

Office. As stated in the introduction, the focus of the

Federal Cartel Office in the past few years has shifted

significantly, however, in the direction of increased pros-

ecution of cartels. In particular, the grocery industry has

come under scrutiny here. In 2013 and 2014, the follow-

ing proceedings stood out in particular:

3.1 Price agreements and anticompetitive exchange

of information: Chocolate cartel

In 2013, the Federal Cartel Office imposed fines against

brand manufacturers of chocolate products totaling EUR

63 million. This was the result of a bonus application –

also referred to as an leniency notice – by Mars GmbH,

which remained fully exempt from punishment in this

way.14

In detail, three different situations were pursued

and fines were imposed: First of all price fixing agree-

ments between the manufacturers of the "Ritter Sport“

chocolate bars and "Milka“. Secondly, price fixing agree-

ments, as well as anticompetitive exchange of infor-

mation, between manufacturers of confectionery, and –

thirdly – anticompetitive exchange of information be-

tween different confectionery manufacturers within a

working group of the Association of the German Confec-

tionery Industry.15

14 Bonus applications provide protection from fines, not, however, from private claims for damages. 15

On the whole cf. Federal Cartel Office, Case report of May 27, 2013.

The price fixing agreements with regard to Ritter Sport or

Milka were made in such a way that those responsible at

the two companies agreed by telephone to pass on in-

creased sales prices in a coordinated way to end con-

sumers. Alfred Ritter GmbH & Co. KG in turn brought this

situation to the attention of the cartel authorities within a

bonus application and therefore did not incur a penalty.

The second situation related to a discussion group be-

tween high-level sales employees of leading confection-

ery manufacturers. Here too, price increases were coor-

dinated for chocolate products, partially also through the

coordinated reduction in package content. In addition,

information that was sensitive with regard to competition,

on the status and progress of negotiations with various

large retailers was exchanged.

The third set of circumstances related to an exchange of

information in a working groups within the Association of

the German Confectionery Industry. During the meetings

of this working group, according to the findings of the

Federal Cartel Office, information was exchanged on

negotiations with the retail grocery trade at annual meet-

ings on conditions and special requirements, as well as

on intended increases in the list prices. This situation is

of particular practical significance, because the fact that

price agreements are contrary to antitrust law has now

become widely known. Companies and associations of

undertakings, however, are less aware of the topic of the

potential antitrust risks associated with an exchange of

information. Association meetings in particular are a

forum that is vulnerable to this.

DECEMBER 2014



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3.2 Territory and quota agreements: Sugar cartel

By a fine decision of February 18, 2014, the Federal

Cartel Office imposed fines totaling EUR 280 million on

leading sugar manufacturers for anticompetitive territory,

quota, and price agreements. According to the findings,16

the manufacturers had reached an agreement that they

would restrict themselves mainly to the sales territories

from which they originate, and therefore not to compete

with each other and to export any excess production to

other countries and not to sell them on the domestic

market. The territory agreement was secured by price

and quantity measures were entered into domestically,

as well as measures for the control of imports and ex-

ports. Quota reductions that were caused by changes in

EU requirements were coordinated between the compa-

nies.17

Dr. Sebastian Graf von Wallwitz LL.M.

[email protected]

16 Here as well, a company that was part of the cartel, Nordzucker AG, had filed a bonus application and therefore obtained a far-reaching fine waiver. 17

cf. Press Release Federal Cartel Office of February 18, 2014.

DECEMBER 2014



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Practice Group Industrial Property / Competition Law Dr. Dorothee Altenburg1 Nikolaus Bertermann2 Dr. Claudia Böckmann1 Dr. Markus Brock1 Dr. Ilja Czernik Georg Delhaes Markus von Fuchs, LL.M.

1

Dr. Thomas Haug Dr. Philipp Heigl Dr. Johann Heyde Dr. Magnus Hirsch1

Dr. Oliver Hornung Margret Knitter, LL.M.1 Stefan Kridlo Christoph Mayerhöffer Dr. Karolin Nelles, LL.M. Dr. Andreas Peschel-Mehner Stephanie Pfaff Marc Pussar Yvonne Schäfer Stefan C. Schicker, LL.M.

1 2 3

Dr. Konstantin Wegner, LL.M.

Practice Group IT & Digital Business

Nikolaus Bertermann

2

Jens Borchardt, LL.M. Dr. ‚Markus Brock1

Dr. Oliver M. Bühr2, 6 Clemens Burgenmeister Dr. Thomas Haug, LL.M. Dr. Philipp Heigl, LL.M. Florian Hensel Dr. Johann Heyde Dr. Oliver Hornung Dr. Wulf Kamlah René M. Kieselmann Franziska Ladiges Daniel Meßmer

Dr. Karolin Nelles, LL.M. Elisabeth Noltenius, LL.M. Dr. Matthias Nordmann, M.A.5 Dr. Matthias Orthwein, LL.M. Dr. Andreas Peschel-Mehner Daniel Pfeier

2

Sven Preiss, LL.M. Stefan C. Schicker, LL.M.

1, 2, 3

Jan Schneider2 Martin Schweinoch

2

Benjamin Spies Julian Westpfahl2 Dr. Hans Markus Wulf

2

Dr. Anne Zoll

Practice Group Media and Entertainment Law

Dr. Dorothee Altenburg

1

Jens Borchardt, LL.M. Hanna Bickel, LL.M. Dr. Ilja Czernik Dr. Ulrich Fuchs Dr. Christoph Haesner, M.C.L Fabian Hartmann Florian Hensel Dr. Johann Heyde Dr. Magnus Hirsch1 Dr. Bernd Joch Norbert Klingner Stefan Kridlo

Dr. Eberhard Kromer, MBA5

Christoph Mayerhöffer Dr. Karolin Nelles, LL.M. Elisabeth Noltenius, LL.M. Pia Odefey Dr. Andreas Peschel-Mehner Sven Preiss, LL.M. Dr. Ulrich Reber Prof. Dr. Mathias Schwarz Georg Wallraf Dr. Konstantin Wegner, LL.M. Dr. Anne Zoll

Practice Group Commercial Law and Distribution Law

Dr. Philipp Asbach Dr. Michael Brauch Dr. Oliver M. Bühr2, 6

Dr. Ilja Czernik Klaus Kelwing Oliver Korte5

Sabine Kröger5

Christine Lingenfelser, LL.M.

Caroline Lorenz Dr. Ulrich Muth

4

Dr. Kolja Petrovicki, LL.M. (UPenn) Sven Pohl Andreas Seidel Dr. Jürgen Sparr, LL.M. Dr. Sebastian Graf von Wallwitz, LL.M.

5

Dr. Josef Zeller5

1 Specialist Lawyer for IP Law 2 Specialist Lawyer for IT Law

³ also Solicitor in England and Wales 4 Specialist Lawyer for Banking Law and Capital Market Law

5 Specialist Lawyer for Commercial Law and Corporate Law 6 Lawyer and Civil Law Notary

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Confectionery Industry Special · 2019-01-17 · phrase should have been "Arta Culinara“ or "Arte...

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