Some additional thoughts on the BGH's landmark decision in Hard Rock Café

Guest Kat Nadia's excellent summary of the recent JIPLP/GRUR "Passing Off and Unfair Competition" event (see here) has prompted this Kat to ponder again the importance of the German Federal Court of Justice's (Bundesgerichtshof, also fondly known as BGH) recent decision in Hard Rock Café (BGH I ZR 188/11 - Hard Rock Café, the BGH's press release can be found here ; the full decision here; in German). 

The logo in question

For those of you that attended the JIPLP/GRUR event, I briefly touched on this case during the panel discussion as an example of how the application of unfair competition law in Germany is influenced by EU laws.  The background of the case and the BGH's decision have been expertly summarised by Anthonia Ghalamkarizadeh on Marques Class 46 (see here). In a nutshell: the defendants opened a Hard Rock Cafe in Heidelberg, Germany, in the early 1970ies, inspired by the claimant's famous and established Hard Rock Café, which had opened in London in 1971. The Heidelberg cafe copied the Hard Rock Cafe logo and subsequently also started selling merchandise under the Hard Rock Cafe logo. The claimants were not impressed and - eventually, after14 years had passed - took the matter to court.

What it is interesting about the BGH decision in the context of unfair competition law, is how European law affects the application of German unfair competition law: in addition to bringing a trade mark infringement claim, the claimant in Hard Rock Cafe had, inter alia, based its claim on unfair competition law, to be more precise on Article 5 (Misleading commercial practices) and Article 3 (Prohibition of unfair commercial practices) German Unfair Competition Act.  These provisions were introduced in accordance with - and in transformation of - the Unfair Business Practices Directive (2005/29/EC) and, in essence, prohibit deceptive and misleading advertising through confusion concerning the origin of goods/services, including through the use of trade marks.

Before the Hard Rock Café decision, it was the BGH's established case law that wherever a conflict was covered by trade mark laws, unfair competition law was not (also) applicable in parallel. The BGH has now expressly changed its opinion and allows a concurrent application of both laws. Notably, the BGH also took the view that in cases of deception concerning the origin of goods/services, the concept of acquiescence should apply to unfair competition claims, just as it does to trade mark claims.   Here the court reasoned that it would make little sense to bar a trade mark owner from pursuing an infringement claim in cases of acquiescence, but not bar the competitors of a (potential) infringer.

An elegant decision with very sound and creative reasoning which will have quite some impact on German trade mark and unfair competition laws and how they interact.