The Regional Court of Munich I grants protection of reputation to Hofbräu München’s trade marks and corporate identifiers “Hofbräuhaus”.
A dispute between Hofbräu München, represented by BOEHMERT & BOEHMERT attorney at law Claudia Deppe, and John Scheller, owner of four Edeka stores in Dresden, which has lasted for more than ten years, has come to an end with a court settlement.
In the oral hearing at the end of February 2022, the Regional Court Munich I had come to the preliminary legal assessment that the lawsuit of Hofbräu München had good chances of success at least because of the reputation of the earlier rights of Hofbräu München to the designation “Hofbräuhaus”.
In order to finally end the long-standing conflict and in view of the costs and time involved in continuing through further instances, the court recommended that the legal dispute should be settled by means of a compromise. This could include in particular that Mr. Scheller withdraws the registration of his trademark „Seit 1872 Dresdner Hofbrauhaus“ and ceases to use this mark. In return, Hofbräu München should waive to claim damages.
The conflict was triggered in spring 2011 when the defendant applied for registration of the German word and figurative mark “Seit 1872 Dresdner Hofbrauhaus“ The owner of four Edeka stores in Dresden has had a beer brewed outside Dresden and sold in his stores under this word/figurative mark since 2011.
Hofbräu München initially filed an opposition with the DPMA against the registration of the defendant’s word/figurative mark on the basis of its earlier trade mark rights to the designations “Hofbräuhaus” and “Hofbräu” and, in parallel to these opposition proceedings, which have not yet been concluded, repeatedly made attempts to reach a settlement.
However, as the defendant did not want to give up its trade mark, continued to offer and advertise its beer under the disputed trade mark and ran a café in one of its Edeka stores under the name “DRESDNER HOFBRAUHAUS”, Hofbräu München filed an infringement action with the Munich Regional Court I in November 2020.
With the action, Hofbräu München claimed in particular that the defendant ceases to use the disputed figurative mark as well as the declaration of invalidity of this mark and based its claims, inter alia, on the reputation of its earlier trade mark rights in the designations “Hofbräuhaus” and „Hofbräu“ for beer and gastronomy services, as evidenced by survey reports.
After both the degree of distinctiveness of Hofbräu München’s earlier trade marks “Hofbräuhaus” and “Hofbräu” and their reputation were questioned in the opposition proceedings, the Regional Court Munich I even expressed in the oral hearing that it considered the reputation of these earlier trade mark rights of Hofbräu München to be an obvious fact known to the courts.
In the meantime, the parties have settled the dispute in accordance with the court’s suggestion.
Representing Hofbräu München: Claudia Deppe, attorney at law BOEHMERT & BOEHMERT