Luck or Love – No Protection for the Idea of Using an Emotional Catchphrase as a Product Name

1. Foodstuffs can be protected against product imitation under Unfair Competition Law

Also everyday foodstuff products are protected against unfair product imitations under German Unfair Competition Law. They are are considered to have competitive originality if specific design elements or packaging features are apt to serve as an indication of origin or to point out its unique characteristics (see BGH, judgment of 7 December 2023, case I ZR 126/22, para. 15 – Glück).

Despite the "Glück" jam being on the German market for only two years before the launch of "LieBee" honey, the Higher Regional Court of Hamburg recognized its high degree of competitive originality, as it kept a striking distance to other products on the market. The court found that its unique jar shape, the "no label" look, and the use of the emotional catchphrase "Glück" (luck) as a product name contributed to its distinctiveness. The "Glück" trademark would be identified by the relevant public as an emotionally charged sign, capable of indicating commercial origin (see OLG Hamburg, judgment of 16 June 2022, case 5 U 95/21).

2. No protection of abstract ideas, only of the specific product get-up

However, the reasoning of the Higher Regional Court of Hamburg did not withstand the BGH’s appeal examination. The abstract concept of using an "emotional catchphrase" as a product name could not establish competitive originality. Protection against imitation, as per Section 4 No. 3 UWG (German Act against Unfair Competition), is confined to the specific product get-up and does not extend to the underlying abstract idea (see BGH, judgment of 7 December 2023, case I ZR 126/22, para. 23 – Glück).

Consequently, the Higher Regional Court of Hamburg's finding that the "LieBee" honey jar had imitated the “Glück” jam was invalidated. To this end, the Higher Regional Court of Hamburg had argued that significant parts of the relevant public would perceive the emotional catchphrase "love" in the product name "LieBee", even if the trade mark was a pun consisting of "love" and "bee" (see BGH, judgment of 7 December 2023, case I ZR 126/22, para. 30 – Glück).

The BGH found that the use of – different – emotional keywords should have not been considered a distinctive coinciding feature of the two products, as this would otherwise grant protection to the underlying abstract product idea (see BGH, judgment of 7 December 2023, case I ZR 126/22, para. 35 – Glück).

3. Avoidable deception of origin in case of different product names and categories (here: honey and jam)

The Higher Regional Court of Hamburg had accepted an avoidable deception of origin pursuant to Section 4 No. 3 lit. a UWG. It claimed that the public would perceive "LieBee" honey as a product extension and secondary brand of the "Glück" jam manufacturer. In view of the Hamburg Court, it seemed plausible that the same manufacturer would call its jam "Glück" (luck) and its honey "LieBee" (love) if the overall impression of the product get-up was highly similar and unique on the market. The labelling with the different trademark "LieBee" could not exclude the deception of origin (see OLG Hamburg, judgment of 16 June 2022, case 5 U 95/21).

The BGH, however, disagreed, emphasizing that the different product names and categories (honey and jam) could indeed prevent such a deception.

In case of everyday products (such as foodstuffs), which usually do not differ significantly in their appearance and get-up, the public is generally guided by the product and manufacturer labels – and not so much by the packaging get-up (see BGH judgment of 19 October 2000, case I ZR 225/98 – Viennetta; BGH judgement of 7 December 2023, case I ZR 126/22, para. 43 – Glück).

In order to determine whether different product and manufacturer signs are apt to exclude a deception of origin, the court will make a comprehensive assessment of the specific circumstances of the case taking into account what significance the public attaches to these labels (see BGH judgment of 19 October 2000, case I ZR 225/98 – Viennetta). In particular, one must consider what kind of product names and manufacturer labels are used on the product imitation, i.e. how similar and how distinctive the signs are, and in what manner they are used (see BGH, judgment of 26 January 2023, case I ZR 15/22 – KERRYGOLD; BGH judgment of 7 December 2023, case I ZR 126/22, para. 43 – Glück).

Here, the BGH criticized the Higher Regional Court of Hamburg for not giving enough weight to the fact that the product labelling "Glück" on the one hand and "LieBee" on the other differ significantly. In case of clearly differentiating product or manufacturer labels, a deception of origin can only be considered if the public believes the imitation is part of a new series or a product of the original manufacturer marketed under a secondary brand (see BGH judgment of 7 December 2023, case I ZR 126/22, para. 45 – Glück).

The "LieBee" honey would not be perceived as a secondary brand of the manufacturer of the "Glück" jam because honey and jam belonged to different product categories (see BGH judgment of 7 December 2023, case I ZR 126/22, para. 46 – Glück).

Also, the court’s reasoning that the "LieBee" honey could be perceived as a new series of the "Glück" jam was overruled by the BGH. The fact that both products allude to the same general idea of a "product name with an emotional catch-phrase" could not be found relevant for considering both products as part of the same series (see BGH judgment of 7 December 2023, case I ZR 126/22, para. 44, para. 49 – Glück).

4. Exploitation of good repute in the absence of deception of origin

If the Higher Regional Court of Hamburg concludes, in its re-examination, that the "LieBee" honey jar does not constitute an avoidable deception of origin under Section 4 no. 3 lit. a UWG, it must further examine whether there is an inappropriate exploitation of reputation under Section 4 no. 3 lit. b UWG (see BGH judgment of December 7 2023, case I ZR 126/22, para. 52 – Glück). An exploitation of reputation is also possible if a deception of origin must be ruled out due to different product and manufacturer labelling (see OLG Köln, judgment of January 15 2010, case 6 U 131/09 – Wick Blue).

5. Design protection exists in parallel to Unfair Competition Law

Alternatively, the "Glück" jam manufacturer also relied on the infringement of its registered Community Designs for the "Glück" jam’s get-up. In cases of product imitation, protection under Design Law should not be overlooked. Particularly in the first three years after the product launch, an infringement action may also be based on the unregistered Community design pursuant to Art. 19 (2) CDR.

6. Conclusions for Companies

As key takeaways for protection against product imitations, you may bear in mind the following:

• Only the specific product get-up (i.e. the specific combination of all the characteristic features such as the shape, colour, font, illustrations, product labels, etc.) is protected against imitations, not the underlying abstract "product concept".
• Even products with a relatively short market presence can be protected against unfair product imitations under German Unfair Competition Law if they significantly differ from the existing market environment.
• Next to Trade Mark Law and Unfair Competition Law, also consider Design Law and Copyright Law for protection against product imitations.

Helping you enforce your products against imitations (so-called "lookalikes" or "MeToo" products) is integral to our daily consulting practice. Also if you find yourself accused of copying competitor’s product, we are here to assist you and offer our expertise to draw up a defense strategy.