Homeric BGH decision on Duff Beer - or: “Reverse product placement” – What are the relevant circles?"

At the end of last year, the German Federal Supreme Court (Bundesgerichtshof) had to decide an interesting case relating to the trade mark Duff Beer, a beer brand with which fans of the US cartoon series The Simpsons might be familiar.  Indeed, the Presiding Judge Joachim Bornkamm reportedly opened proceedings with reference to the The Simpsons where "a certain Mr Homer Simpson appears; and this gentleman drinks".  Bornkamm also reportedly said that Simpson's favourite beer was "a cheaper brand".  At first glance, this dispute relates to two German breweries and an action for a declaration of invalidity. However, this is not all: it is also a case that deals with the intriguing issue of 'reverse product placement'.  

German IP enthusiast Adrian Kleinheyer reviewed the Bundesgerichtshof decision and has sent us the following detailed report: a massive Katpat and Dankeschoen to him.  

Adrian tells us:

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. 

Defendant's mark

Label on the beer bottle
sold by the defendant

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.  

Claimant's TM 1

Claimant's TM 2

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. 

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”. 

According to the Court, the reasonably well-informed and reasonably observant and circumspect (beer-)consumer would mainly pay attention to the word element “Duff Beer”, and not to the rather ornamental graphic design. Consequently, the Court held that the label shown above represents a genuine use of the registered trade mark. 

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)."

Merpel wonders whether she would be considered as "reasonably well-informed and reasonably observant and circumspect (beer-)consumer"?  Indeed, would this decision have been different outside of Germany?  On the other hand, she is quite certain that she does not agree with Der Spiegel's satirical suggestion that the defendant could always "try its hand at Fudd Beer... according to Homer's bartender Moe, that stuff might make you go blind."