Act on the Protection of Trade Marks and other Symbols
The Act on the Protection of Trade Marks and other Symbols (Markengesetz) was introduced in 1994 and replaced the former Trade Mark Law that had long been in force. It has since given great importance to the protection of indications of geographical source.
The indication of geographical source differs from a trademark in that it identifies not the business manufacturing a product, but the geographical origin of goods or services.
The protection of indications of geographical source at the national level is not organised on the basis of specific products, as is the case with the protection of geographical indications at Community level, but includes goods of all kinds and the service sector. The latter, though, is not relevant in the Customs context.
The codification of the protection of geographical indications of is a task of considerable difficulty. Even determining the boundary between a geographical indication of source or origin and a generic name can be quite complicated.
According to Section 126 (2) of the current German Trade Marks Act, protection as a geographical indication of source does not apply to generic names.
A generic name is the name of a product that, although it refers to the city or region where the product was originally produced or sold, is now only understood as a description of a product’s characteristics.
Thus in 1900 "Pilsener" or "Pils" already became a generic name. On 5 October 1842, in the Bohemian town of Pilsen, Josef Groll (1813-1887) of Vilshofen in Lower Bavaria created the first brew of the beer that would become the epitome of an own beer variety – Pils, or Pilsener. Initially, the term "Pilsener Bier" was an indication of source or origin. The fame of this beer became so great that by the end of the 19th century the term „Pils“ had already become popularly synonymous with the light, strongly hopped beer. "Pilsener" thus gradually turned into a generic name.
In 1898, the Bürgerliches Brauhaus brewery in Pilsen sought an injunction against the Munich brewery of the Thomass brothers. The subject matter of the suit was the designation "Thomass-Pilsner-Bier". Expert witnesses, though, were already of the view that “Pilsener” was not an indication of origin, but a generic name.
In April 1899, the generic name "Pilsener" was recognised by the courts as a variety denomination. From 1900, the abbreviated name "Pils" has been applied to light, strongly hopped beers as a generic name in Germany.
Gradual recognition as a generic name always requires that the consumer has been aware of this use of the name for a longer period.
However, labelling a product with a geographical indication of source would, in many cases, also lead to complications. For example, if a product is on sale in Germany and labelled "Made in Germany", the purchaser or consumer will usually assume that the product was essentially produced in Germany. If the impression given to the consumer is, in fact, incorrect then both deception and unlawful labelling have taken place.
When assessing if or to which extent labelling with a geographical indication may be unlawful, a number of criteria must be considered. The following can indicate that the identification is admissible:
- the product was, or is, substantially produced and/or substantially processed in Germany,
- a critical part of the added value was or is a result of assembly in Germany,
- a relevant step of finishing the product took or takes place in Germany.
Such admissibility was also made clear in a decision by the Federal Court of Justice (Bundesgerichtshof, BGH) in 1973.
The Federal Court of Justice stated: "It is usual …to expect… of a German product that it is produced in Germany by a German manufacturer… Of decisive importance is that the qualities or the components of the product, which give the product its value in the eyes of the public, are the results of German labour."
In this context, "value” should not be understood merely as the material value, but also as the value in terms of the consumer’s appreciation, which can result from the kind, quality, type, or some other characteristics or features of the product
Whether labelling with a geographical indication is unlawful can under certain circumstances only be determined with some difficulty, and depends on more detailed particulars of the history of the product. This is especially so in cases of multi-stage processing. Where the product as such merely undergoes uncomplicated final assembly or final inspection in Germany there is no justification to label it with, for example, "Made in Germany".
If that is the case, seizure pursuant to Section 151 of the Act on the Protection of Trade Marks and other Symbols would clearly be justified.
