The Regional Court of Munich (Landgericht München I) confirmed an interim order, prohibiting the supermarket chain Real from marketing its products marked with a sign similar to the logo of the German Football Association (DFB).

According to the Court's press release published today, the DFB had been using a logo that contained an eagle for many years, and successfully registered different versions of this logo as German as well as Community trade marks (see one example of the claimant's marks on the right). In connection with the World Cup 2014, the defendant offered 'fan gear' and merchandise marked with a sign consisting of an eagle and (in some instances) the word 'Deutschland'. In its decision, the Court found that there was a clear figurative similarity between the registered trade marks and the sign used by Real, resulting in an infringement of the trade mark owner's rights.

The parties were also in dispute concerning the question whether the DFB's eagle emblem could actually be protected as a trade mark. As laid down by Sec. 8(2) No. 6 of the German Trade Mark Act and Art. 7(1)(h) of the CTMR, a sign may not be registered, if it contains state coats of arms, state flags or other sovereign state symbols (such as the German 'Federal Eagle' – see here). However, the Court held that it was precluded from assessing whether or not the eagle emblem within the claimant's trade marks was an imitation of the Federal Eagle. This aspect could only be dealt with in cancellation proceedings before the competent authorities. Therefore, the Court considered itself bound by the validity of the existing trade mark registrations.

Accordingly, the conflict between the parties has not been resolved entirely by the Court's decision. The supermarket chain, as was reported in the German media, has already filed proceedings before the German Patent and Trade Mark Office as well as the OHIM to cancel the DFB's marks containing the alleged imitation of the 'Federal Eagle'. Several reports have expressed hope that a successful cancellation might ultimately reduce prices of products relating to fan merchandise, which consequently could be sold by competitors independently. At the same time, readers have been reminded that using the actual 'Federal Eagle' to identify goods or services without authorisation will, nonetheless, remain an administrative offence under German trade mark law.

Reference: Landgericht München I, decision in case 11 HKO O 10510/14.