Plaintiff/plaintiff’s mark
Defendant/defendant’s mark
Deer versus bull
In 2021, the defendant applied for the EU trademark for, inter alia, spirits; agave spirits (class 33). The defendant sells the agave spirit with this label nationwide in its online store. The plaintiff is known for the herbal liqueur Jägermeister and has been using the figurative mark “deer” since 1935 almost without any changes. Today’s version is the German figurative mark “deer”; registered in 2015 for, among other things, alcoholic beverages, in particular herbal spirits (class 33). The plaintiff brought an action before the Hamburg Regional Court for infringement of his trademark rights § 14 par. 1, 2 no. 3, par. 5 MarkenG (German Trademark Act) and protection against imitation §§ 3, 4 no. 3 b), 8 UWG (Act against Unfair Competition).
No enforcement of trademark without similarity of the signs
The court finds that the plaintiff’s mark is a well–known trademark in Germany. This is evident from the survey submitted by the plaintiff, and it did not matter that this survey hasn’t been conducted with the identical sign. In the case of the protection of reputation under § 14 par. 2 No. 3 MarkenG, there must also be a similarity between the signs, which was denied by the court in the present case. Here, both marks have a creature with antlers in a frontal depiction as the central figurative element, but this is designed differently (naturalistic deer depiction vs. stylized mythical creature rather deer than bull). The court also noted other significant differences in the trademarks’ designs.
Due to the lack of similarity between the signs there is no protection under trademark law.
Protection against imitation of product packaging §§ 3, 4 No. 3 b), 8 UWG
The court also ruled that the product packaging was not unfairly imitative.
The attentive average consumer will not relate the relevant products to each other based on its memory. The distinctive elements of the plaintiff’s mark (orange banderole with the lettering Jägermeister and the orange “56”) are not part of the defendant’s mark.
To the point
Even a well–known mark cannot be enforced against signs that do not have a certain degree of phonetic, typeface or conceptual similarity. The assessment of the similarity of the signs should therefore not be a gut decision but should be carefully examined.