Appeals court must reconsider identical marks case


In Callaway Golf Company v Big Bertha Srl (I ZR 235/00), the German Supreme Court has reversed a lower court decision to dismiss the plaintiff's claims that the defendant infringed and diluted its BIG BERTHA trademark. The Supreme Court remanded the case for the lower court to consider all the circumstances, as the case involves identical marks.

In 1998 Italian company Big Bertha, which has owned an international registration for the mark BIG BERTHA in relation to clothing since 1993, sold cashmere pullovers at golf tournaments in Germany. It also used golf clubs in its advertisements. Callaway Golf initiated court proceedings against Big Bertha for trademark infringement and dilution on the basis of (i) a prior German trademark registration for BIG BERTHA in relation to golf clubs and other golf equipment, and (ii) the reputation of the mark in relation to those goods.

The court of first instance dismissed Callaway's claims.

The court of appeals affirmed. It considered that (i) golf clubs and bags are not similar to articles of clothing, and (ii) Callaway had not proved the reputation of its mark. Consequently, it dismissed the claims of likelihood of confusion and dilution.

On further appeal, the Supreme Court reversed the decision. It found that:

  • the marks are identical;

  • the goods involved are not dissimilar; and

  • Callaway had proved the reputation of its mark.

Accordingly, it remanded the case to the court of appeals for it to consider all the circumstances of the case in accordance with the case law of the European Court of Justice. The Supreme Court also ruled that a claim of likelihood of confusion may not be denied when (i) the marks involved are identical, and (ii) the goods involved are not dissimilar.

Peter Munzinger, Bardehle Pagenberg Dost Altenburg Geissler, Munich

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