Homer Simpson, the main protagonist of the animated TV series 'The Simpsons', often spends his evenings enjoying an ice cold 'Duff Beer'.
The brand has become so famous that Time magazine included it in a list of the 18 most influential fictitious companies of all time.
Although 20th Century Fox, the holder of the rights in 'The Simpsons', has numerous trade mark registrations in relation to DUFF, its creator, Matt Groening, had - due to the youthful age of many 'Simpsons' fans - refused to use or license Duff as a trade mark for beer. Others have tried to step into the gap and capitalise on the fame of the brand in relation to beer itself.
In 1999 a German brewery applied to register the following logo as a trade mark in Germany:
Fox opposed the registration. As they did not own any trade mark rights for Duff Beer for class 32 in the EU, Fox asserted that Duff Beer was a notorious trade mark in Germany. That attempt failed as they were unable to prove that Duff Beer was in fact well-known among German consumers.
Initially, however, the German mark was not used as registered and a red label, much closer to the fictional Duff brand, was adopted.
A competing German brewery, Duff Beer UG, itself marketing another Duff beer using a logo similar to the fictional brand, submitted a cancellation application for lack of use. The German Federal Court of Justice (BGH) had to decide whether the use of Duff Beer in the form of a different logo constituted genuine use of the registered trade mark. The claimant asserted that the label used was more similar to the Duff Beer label from the TV series than the registered mark and so consumers, knowing the fictional Duff Beer from 'The Simpsons', would pay attention not only to the word Duff but also to the colour and design of the label and assume that the product was official merchandise. As a result, the distinctive character of the sign actually used was different from the registered trade mark and so did not qualify as genuine, right-preserving use.
The Court disagreed and ruled that the registered trade mark was essentially characterised by the lettering 'Duff Beer', which was used. Reasonably well-informed and observant beer consumers (presumably still on their first or second beer?) were primarily interested in the brand name rather than the shape and colour of the label, especially since various beers from the same brewery were typically offered under differently designed labels. The court further ruled that the reputation of the fictional 'Duff Beer' was not to be taken into account. What counted was the beer drinkers’ perspective rather than the view of consumers who were fans of the TV series 'The Simpsons'.
This meant there were two businesses in Germany selling competing Duff Beer products, neither of which were licensed by Fox.
Duff Beer UG’s logo
This case highlights the problems of trade mark proprietors in the sphere of merchandising. The image and reputation of a fictitious product or brand are at risk in the real world. To this day, the owner of the German mark Duff BEER has profited from Homer Simpson’s passion for 'Duff Beer'.
Fox’s attempts to protect the Duff brand continue – it appears to have reached an accommodation with Duff Beer UG, whose trade mark applications were transferred to Fox, and an application to register the German Duff BEER logo as an EUTM (008820763) is still under appeal. No doubt in part to help with its efforts, as reported by The Daily Telegraph, Fox finally announced that an officially licensed Duff beer would be launched, in Chile, last year, with plans to introduce it in Europe in the near future.
Thomas Raab is a member of the IP Emerging Issues Team and a partner of Taylor Wessing in Germany