About the dissimilarity of wine and ham

Some of the more vinophile IP enthusiasts might have heard of young Austrian wine called "Junker" coming from southern Styria. Already in 1986 some wineries from Styria joined together to the sell young white wine from Styria under a common name and a joint advertising campaign. An advertising agency developed the label "Styrian Junker". The marketing of the new wine was successful, so more and more Styrian wine growers were interested in collaborating. This led to the founding of the plaintiff, a common marketing agency, according to whose statutes the protection and promotion of Styrian wine is aimed. In 1996 the trade mark "Steirischer Junker" ("Styrian Junker") for wines (class 33) was applied for and registered; in 2004 the same word mark was registered for foods (class 30) without filing a proof of the reputation of the mark.

The defendant manufactures and sells meat and meat products, especially bacon and ham. He is the owner of the word mark "Junkerschinken" ("Junker ham") with a priority of the year 2000 for meat and meat products (class 29).

After some years of cooperation the defendant cancelled a license agreement with the plaintiff. When the plaintiff found a new licensee, who offered ham under the name "Junkerschinken", the defendant sent a cease and desist letter to the plaintiff's licensee, and the conflict finally found its way to the courts.

The courts of the first and second instance both found, in favour of the plaintiff, that there is likelihood of confusion between the well-known elder plaintiff's word mark for wines and the (infringing) use for ham of the distinctive part of the plaintiff's mark, i.e. "Junker" - not so the Supreme Court:

Although the applicant claimed reputation of their mark, the action was not based on these facts. As far as the lower courts assumed that plaintiff's mark has a reputation these findings are not supported by evidence.

As the term "Junker" means "young landlord" and the trade mark is used to brand young wine, the descriptiveness of the sign weakens the distinctiveness of the sign; reputation of the disputed trade mark at the collision time of the conflicting signs in 2000 has not been proven. On the other hand "Junker ham" is not considered as reference to a young ham, in the sense of meaning a low level of maturity of the ham; accordingly "Junker" is not descriptive for ham.

The - therefore only slight - resemblance of the two marks is not outweighed by a greater similarity of the goods. While it is true that both goods are agricultural products, wine and ham are produced in different companies, and with wine in wine farms, ham in meat processing plants. Thus the average consumer would not consider that wines called "Styrian Junker" and "Junker ham" originate from the same undertaking or economically-linked undertakings. Thus there is no likelihood of confusion.

In closing the Supreme Court stressed once again that for the collision time it was not proven that the plaintiff's mark had reputation. Thus, the lesson to be learned from this decision is that - although it might not be absolutely necessary to get a mark in the register - it might still be of extremely high value for the later enforcement of the mark to prove reputation when the mark is registered in case the mark was already intensively used. If reputation is not proven at the time of registration in case of a court action starting years later, it will be very difficult or even impossible to prove that the mark already had reputation years before litigation started.

Dr. Rainer Beetz, LL.M.