James Bond drinking Heineken (as happened in “Skyfall”) is a perfect example of “product placement”. But this also works in the reverse order: First the fame in fiction, then the commercial success in reality. An example of this so-called “reverse product placement” is “Duff Beer”, which did not exist in the real world until it became known as the preferred drink of Homer Simpson, star of the TV cartoon series “The Simpsons”.
The German Federal Supreme Court (Bundesgerichtshof) recently had to identify the relevant circles in order to determine the average consumer in case of a trade mark conflict.
The facts in short: The label [shown on the left] is registered in the name of the defendant as a German trade mark (DE 39901100) since June 8, 1999, in Nice class 32 for, inter alia, “beer”. The label [shown on the right] shows the use of the trade mark on beer bottles sold by the defendant from 2004 to 2009. Does such use amount to genuine use of the registered mark? No, thought the owners of the two trade marks featured below (both registered for “beer” on April 28, 2009 and August 21, 2009), and brought an action for revocation because of non-use.
Label on the beer bottle
sold by the defendant
Claimant's TM 1
Section 26(3) German Trade Mark Act, corresponding to Article 10(1)(a) CTMR, provides that genuine use of a trade mark includes “use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered”. The Nuremburg Appeal Court found that the requirements of this provision are met, given that the distinctive part of the trade mark, the word element “Duff Beer”, is the dominant element of the defendant’s trade mark and his label, while differences in font, style and colors were considered to be marginal factors.
Claimant's TM 2
The Federal Supreme Court confirmed this decision. According to established case law, distinctiveness of a word & device mark usually results from the verbal element. The figurative element, however, can be of importance where the phonetic element is rather descriptive. In the case at hand the Court found that “Duff” does not have any descriptive connotation within the relevant national circles of … well, of whom – beer drinkers or fans of “The Simpsons”?
The claimants (asserting lack of use of the defendant’s trade mark) argued that “Duff Beer” is well-known as the favorite drink of Homer Simpson. Accordingly, the audience of “The Simpsons” would pay attention not only to the name “Duff” but also to the graphical design of the bottle label and, thus, perceive differences between the label as used (similar to the cartoon “Duff” as can be seen) and the registered mark as being significant. Such differences would preclude the mark as used being taken as an acceptable variant under Section 26 (3) German Trade Mark Act.
But the claimants’ hope that the Supreme Court would consider the audience of “The Simpsons” to be the relevant circle vanished like the foam of a fresh draught beer: The Court found the relevant circles of a trade mark registered and used for beer to be beer drinkers, i.e. “a broad public of adult consumers” and not only fans of “The Simpsons” even though the trade mark holder most obviously tried to attract especially fans of “The Simpsons” by way of such “reverse product placement”.
By the way: none of the trade marks above was registered in the name or with the consent of the right holders of “The Simpsons”, i.e. the author Matt Groening and the Twentieth Century Fox Film Corporation. Their opposition against the German mark DE 39901100 had no success, but other oppositions are still pending, inter alia, one against the Community trade mark (CTM 8351091) before the General Court (here)."