ERDINGER beer mark not infringed by local newspaper title

The Munich Regional Court has dismissed brewer Brauerei Erdinger Weißbräu Werner Brombach GmbH's (BEW) request for an injunction preventing publisher Süddeutscher Verlag from using the name Erdinger SZ as the title of a local newspaper (Case 1HK O 22662/05, August 9 2006).

BEW produces the well-known Erdinger Weißbier. The name Erdinger originates from the city of Erding near Munich, where the brewery has its place of business. Süddeutscher Verlag is also well known in Germany and publishes the daily newspaper named Süddeutsche Zeitung, with the title also being abbreviated to SZ. Since 1977 Süddeutscher Verlag has published several regional issues in the Munich area where the abbreviated name SZ is used - as is now the case with Erdinger SZ for the local Erding issue.

BEW instituted an action for injunctive relief and requested that Süddeutscher Verlag waive the name Erdinger in the title Erdinger SZ. BEW based its claim on its prior trademark, firm name and work title rights in the name Erdinger. BEW has sold its products under the name Erdinger since 1949 and registered ERDINGER as a trademark for beer in 1994 following proof that the mark had acquired distinctive character through use.

The Munich Regional Court dismissed the request for injunctive relief. Its reasoning included the following points:

• The title will not cause confusion with the trademark since the public would understand the name Erdinger in Erdinger SZ only as a geographic designation. The fame of the brewery's trademark did not change this finding as, from the viewpoint of consumers, the newspaper title is characterized by the 'SZ' element.
  
  
• The considerable difference between the brewery and publishing businesses excluded any possibility that the use of the name Erdinger in the magazine title was taking unfair advantage of, or was detrimental to, the distinctive character or the repute of the beer trademark.
  
  
• The court dismissed BEW's evidence that it produces its own publication called Erdinger Fanpost. It pointed out that the publication of this leaflet three times a year did not mean that BEW was a publishing company.
  
  
• The use of the name Erdinger in the magazine title would not be unfair since this geographical name had already been part of the previous name of Süddeutscher Verlag's Erding regional issue - Erdinger Neueste Nachrichten. In addition, the use of such designations is customary with regard to newspapers.
  
  
• BEW's argument that Süddeutscher Verlag could have used an alternative title such as SZ für Erding (SZ for Erding) or SZ aus Erding (SZ from Erding) did not convince the court that Süddeutscher Verlag had acted unfairly.

This judgment confirms that the use of such geographical designations cannot be restricted. However, BEW has filed an appeal to the Munich Regional Appeal Court.

Friederike Bahr, Beiten Burkhardt, Munich