GERMANY Trends and Developments Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
hood of confusion or the unfair exploitation of reputa - tion. Where an action against a new application fails due to lack of confusion or failure to meet the require - ments for protection of a well-known trade mark, this cannot be circumvented by invoking the absolute ground of bad-faith filing. The appellant’s prospec - tive interest in re-issuing its “Testarossa” model series likewise does not establish bad faith. An appeal was lodged with the Federal Court of Justice (BGH). Decision of the BGH In its decision of 11 September 2025, the BGH upheld the decision of the BPatG. According to the BGH, in order to establish bad faith the appellant must have acted with the intention of harming or obstructing third‑party interests. The party challenging the regis - tration bears the burden of proof. If the circumstances relied upon justify rebutting the presumption of good faith, the appellant must explain its intentions at the time of filing, in particular by providing plausible expla - nations of the objectives and the economic rationale for filing the application. Dubai chocolate On 27 June 2025, the Higher Regional Court of Cologne decided on the question of when an indica - tion qualifies as a protected geographical indication of origin under Section 126 Para. 1 of the German Trade Mark Act and how this differs from a generic designation under Section 126 Para. 2 of the German Trade Mark Act. The facts of the case The appellant, a confectionery retailer, markets a prod - uct as “L.-Dubai Chocolate”, sourced from a company in Dubai. Although the chocolate is handcrafted on site, the key ingredients (pistachios and milk choco - late) are not sourced in Dubai. The respondent sells “ALYAN Dubai Handmade Chocolate”, advertised as “Dubai chocolate”, which is manufactured in Türkiye. The label “Product of Türkiye” appears on the back, bottom right part of the packaging. The appellant sought to prohibit sale and/or advertising under the designation “Dubai chocolate”.
The relevant provisions of the German Trade Mark Act Section 126 – Names, indications or signs protected as indications of geographical origin: (1) Indications of geographical origin within the mean - ing of this Act shall be the names of places, areas, territories or countries as well as other indications or signs which are used in trade to identify the geograph - ical origin of goods or services. (2) Names, indications or signs within the meaning of subsection (1) which are generic names shall not be eligible for protection as indications of geographi - cal origin. Designations shall be regarded as generic names which contain an indication of the geographi - cal origin within the meaning of subsection (1) or are derived from such an indication, but which have lost their original significance and serve as the name of goods or services or as designations or indications of the nature, quality, variety or other properties or (1) Indications of geographical origin may not be used in trade for goods or services which do not originate from the place, area, territory or country which is des - ignated by the indication of geographical origin if it is likely to mislead concerning the geographical origin if such names, indications or signs for goods or services of different origin are used. Section 128 – Rights because of infringement: characteristics of goods or services. Section 127 – Scope of protection: (1) Any person who, in trade, uses names, indications or signs contrary to section 127 may be sued by per - sons entitled to assert claims in accordance with sec - tion 8 (3) of the Act Against Unfair Competition for injunctive relief in the event of the risk of recurrent infringement. The right may also be asserted in the event of the risk of an infringement. Sections 18, 19, 19a and 19c shall apply accordingly. The relevant provisions of the German Act Against Unfair Competition (UWG) Section 8 – Elimination; injunctive relief:
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