Journal of Intellectual Property Law & Practice Advance Access originally published online on October 25, 2008
Journal of Intellectual Property Law & Practice 2008 3(12):764-774; doi:10.1093/jiplp/jpn189
| ||||||||||||||||||||||||||||||||||||||||||||||||||
© The Author (2008). Published by Oxford University Press. All rights reserved.
Festive Feature Article |
Knut, Flocke, and Co: the bear facts revealed
 |
Abstract |
|---|
Top
Abstract
Prologue: Bruno--the ill-fated...Legal context: It appears that Germans just cannot get enough of their bears these days, whether it is cuddly Knut, Berlin zoo's celebrity polar bear with a Vanity Fair magazine cover, cute Flocke, Nuremberg zoo's polar bear cub with her own website and marketing machine, or little Wilbär, their understated polar bear cousin from the Stuttgart zoo. In the context of marketing the birth of high-profile zoo animals, some interesting legal issues arise.
Key points: The article aims to give an account of how the Germanic bear craze started and looks at the marketing and merchandise machinery involved. In particular, it discusses the trade mark disputes over polar bear cub Flocke, as decided by the Regional Court of Nuremberg-Fürth in March 2008, and the trade mark dispute over Austrian panda bear cub Fu Long.
Practical significance: The article examines some of the trade mark law issues surrounding the marketing of the birth of high profile zoo animals. It examines the financial worth of polar bear trade marks, the perils of public naming campaigns, and shows how serious problems can result from not taking trade mark protection seriously at an early stage.
| Key issues
|
It appears that Germans just cannot get enough of their bears these days, whether it is Knut, Berlin zoo's celebrity polar bear with a Vanity Fair magazine cover under his furry belt, Flocke, Nuremberg zoo's polar bear cub with her own website and marketing machine, or Wilbär, their understated polar bear cousin from the Stuttgart zoo. The following article aims to give an account of where and when the bear craze started and looks at the marketing and merchandize machinery involved. It will try to illustrate how these bears have left their paw-prints on the German trade mark register and will show how a trade mark made the Berlin zoo's shares almost double in value.
Polar bear cub Wilbär and mother Corinna at the Wilhelma zoo Stuttgart, June 2008.
|
Prologue: Bruno—the ill-fated brown bear |
|---|
So how did it all begin? It appears that this latest craze started with brown bear Bruno, otherwise and officially known as ‘JJ1’, whose sad fate was heavily publicized by Germany's media in the summer of 2006. Being part of an Italian government programme to reintroduce bears to the Alps, Bruno was the first wild bear to be sighted in Germany since 1835, only to be shot by Bavarian hunters after a 7 week chase and after coming too close to a town and consequently posing a threat to the local population.1 Despite the fact that the 2006 FIFA World Cup took place in Germany during the same period, the hunt for Bruno and his untimely death gripped Germany's media attention for several weeks. Soon Bruno had his own websites2 and his own theme songs composed by devoted fans.3 Bruno T-shirts were printed, a ‘Hunt Bruno’ (Jagt Bruno) computer game was published on the internet,4 and famous German toy maker Steiff produced a special edition ‘Bruno’ teddy bear.5 Once dubbed ‘problem bear’ (Problembär) by the former Bavarian premier Edmund Stoiber,6 Bruno even inspired7 a children's book on environmental issues8 and a serious novella.9
Bruno also left his paw-prints on the German trade mark register, which shows several 2006 registrations for ‘Bruno’ trade marks, such as the word mark ‘Bruno’,10 which was filed at the height of the Bruno chase on 7 July 2006 in the name of a sweets manufacturer and covered, inter alia, milk products in class 29, sweets in class 30, and fruit juice in class 32. Further registered Bruno trade marks include the word mark ‘JJ1/Bruno der Bär’, covering clothing in class 25 and cuddly toys and toys in class 28 and ‘BRUNO DER BÄR’, covering soaps in class 3, medicated sweets, and vitamin preparations in class 5 and non-medicated tea in class 30, both filed in November 2007, as well as the ‘Bruno der Braunbär’ covering class 30, ‘BÄRENSTARK WIE BRUNO ... ’ covering classes 36, 35, and 42, and Bruno and Knut covering classes 16, 25, and 28.
|
Polar bear cub Knut—Knutmania |
|---|
Not long after the excitement surrounding problematic Bruno in summer 2006, another bear made it into the German news: Knut, the cute little polar bear cub, who was born at Berlin Zoo at the end of 2006. ‘Cuddly Knut’ had to be hand-reared by his keeper Thomas after being rescued when his mother Tosca rejected him. While Bruno's fame had been geographically restricted mainly to Germany, Austria, and Italy, Knut soon became a global celebrity when German animal rights activists allegedly called for him to be put down on the grounds that he could never fully assimilate with other polar bears.11 Despite the fact that Berlin Zoo quickly assured the worried public that it had no such plans, the news had spread, and from then on, Knut's rise to global fame was unstoppable. Consequently, when Knut was finally officially presented to the world at Berlin Zoo on 23 March 2007, he was eagerly awaited by more than 200 journalists and camera teams from all over the world.12 Knut subsequently featured globally in numerous news articles and television programmes and famous photographer Annie Leibovitz's Knut portraits even made the covers of German Vanity Fair in March 2007 and American Vanity Fair's Green Issue in May 2007, with Knut being superimposed into a photograph showing actor Leonardo Di Caprio.13
|
Cashing in on ‘Cuddly Knut’ |
|---|
Polar bear souvenirs.
From the beginning, companies were interested in cashing in on Knut's cuddly image and it was reported that the zoo received several hundred business proposals, not only from German companies but also from the United States, China, Taiwan, and Japan.14 As with Bruno, German toy manufacturer Steiff soon produced Knut toys. The first edition of 2400 Knut teddy bears, which were exclusively sold at Berlin Zoo, sold out within a few days.15 In April 2007, German sweets maker Haribo released a raspberry flavoured white gummy bear ‘Knuddel Knut'sch’,16 promising to donate a share of the profits to the zoo. By June 2007, Knut's official biography was published, written by nobody less than best-selling US author Craig Hatkoff (together with his young daughters), going into its first reprint within days due to high demand.17 By October 2007, Knut had already been seen by two million visitors, with peak crowds limited to only a few minutes' viewing time each.18 By December 2007, plans of a Hollywood film offer were announced.19 It was (conservatively) estimated that Knut single-pawedly brought Berlin Zoo an increase of five million Euros in revenues for ticket and souvenir sales in 2007 alone.20
|
Knut trade marks |
|---|
German trade mark No. 30740094.8 RESPECT HABITATS. KNUT.
The financial worth of the Knut brand was further illustrated by the fact that when Berlin Zoo officially registered Knut as a trade mark at the German Patent and Trade Mark Office in March 2007, the zoo's shares at the Berlin stock exchange almost doubled in value from 2500 to 4900 Euros each.21 ‘We never thought of registering a trade mark for an animal name before but we succeeded and it works amazingly well. ... Within just two days, a global trade mark was born. Our shares are almost exploding’ Berlin zoo's business director Dr Gerald Uhlich told reporters in early April 2007.22 The zoo's distribution director, Vivian Kreft, had already announced in March 2007 that the zoo had filed for trade mark protection for ‘Knut’ and was aiming to bring out ‘great Knut products’.23 However, despite the flurry of marketing activities and the Knut merchandizing, it has never been just about making money. A percentage of Steiff's revenues for Knut teddy bears as well as a share of the profits of Knut's biography were donated to the zoo's environmental campaign.24 According to the zoo, licences on the zoo's registered word and device trade mark ‘Respect Habitats. Knut’—depicting a polar bear embracing the globe—were only granted to companies which shared the zoo's philosophy of protecting threatened habitats; excluding producers of incompatible products, such as high proof alcohol. The zoo also stressed that the licensing royalties would be used to fund habitat protection projects.25
The Knut phenomenon even made it into the German Patent and Trade Mark Office's annual report for 2007, where it was reported that the office received almost 50 new trade mark applications incorporating or alluding to the name Knut in the weeks after Knut's official public presentation in March 2007.26 The annual report states that all applications had been registered, except for those that fell short of formal requirements, explaining that the name ‘Knut’, like any other name, had an individualizing character and as such could function as a trade mark. According to the Office, the applicants were ‘very imaginative’, not only filing for plain Knut word marks, in reference to the ‘concrete animal personality’, but also filing for more fanciful composite marks and slogans such as ‘Knut, der Elch’ (Knut, the elk), ‘alles wird gut—Knut’ (everything will be good—Knut), ‘!Färbt Knut ein!’ (!Colour Knut in!) and ‘Knutzen’.
|
Bearing further interest |
|---|
One would think that, now that Knut is a grown up polar bear, things should have calmed down, especially after Knut had some bad press when he displayed ‘psychopathic’ behaviour—but no such thing. In summer 2008, Knut was in the headlines again and it was once again about money. While Berlin Zoo welcomed its five-millionth Knut visitor,27 German environment minister Sigmar Gabriel was accused of using his Knut patronage as a publicity stunt (‘feeding Knut with taxes’) after it transpired that the patronage had cost the German taxpayer about 11,900 Euros.28 The news came shortly after reports of another money-related Knut story.29 Tierpark Neumünster Zoo, owner of Knut's father polar bear Lars, had sued Berlin Zoo for a share of the royalties earned through the licensing of the Knut brand and asked for Berlin Zoo to disclose all its Knut related earnings. Neumünster Zoo based its claim on a ‘breeding agreement’, which not only stipulated that Knut as the first animal to survive belonged to the Neumünster Zoo, but which also granted the latter a certain share of any Knut related profits. It was for the Higher Regional Court of Berlin to decide whether Tierpark Neumünster should rightfully have a share of the alleged overall 6.8 million Euros Berlin Zoo had earned in 2007 by marketing the Knut brand.30 Tierpark Neumünster does not receive any state subsidies and was hoping to renovate some parts of its zoo with the Knut profits. The director of Berlin Zoo was quoted as saying that the agreement between the zoos did not foresee any sharing of profits and that all the Tierpark Neumünster was entitled to were ‘some penguins’.31 Even though the outcome of this case was not yet known at the time this article was written, the author boldly predicts that this court case is not the last twist in the Knut saga.
Knut stamp as issued by Deutsche Post AG in 2008.
|
Flocke—the furry snowflake from Nuremberg |
|---|
In an almost surreal duplication of events, the Knut story seemed to repeat itself at Nuremberg Zoo, where, in January 2008, polar bear cub Flocke was taken from her mother amid concerns she could kill the newborn, after keepers saw mother bear Vera carrying the cub around in her jaws and tossing it around. Flocke's fate captured the German public after two other polar cubs, born in the same zoo around the same time to a different mother, had passed away after reportedly both contracting a disease and having been eaten by their mother.32 After a public outcry to save Flocke from a similar fate—and in the light of Knutmania—it was hardly surprising that Nuremberg Zoo was a little more astute than Berlin had been in its handling of Knut. Nuremberg Zoo stressed early on that Flocke was not just there to make profits but—with U.N. Environment Programme chief Achim Steiner as her official patron33—should help to raise concern on the effects of global warming on the polar bear's Artic habitat: ‘Polar bears are destined to be the ambassadors of climate change ... we have to make use of the huge public interest’.34
|
Moderate marketing: the bear essentials |
|---|
German Trade Mark No. 302008007395.0 Eisbär Flocke Tiergarten Nürnberg owned by the City of Nuremberg.
The zoo's marketing machinery took off without any further delay and Flocke was greeted by no less than 360 reporters, television teams, and photographers when she had her first official outing in April 2008.35 After a public naming process, the city of Nuremberg, owner of Nuremberg Zoo, on a special Flocke website36 soon published a style guide on how to use the newly created Flocke trade mark logo37 and started providing information for potentially interested licensees. As the ‘owner of the brand trade mark "Eisbär Flocke" and thus owner of all rights for all essential product groups [the City of Nuremberg] ... plans to market polar bear baby, "Flocke", to a moderate extent’. For its moderate marketing effort, the city had envisaged a ‘non-exhaustive’ list of products, which did ‘not exclude any other creative products you might want to suggest’. The list included merchandize such as pendants, key rings, pins, bags, rucksacks, umbrellas, cups, mugs, drinking bottles, bed linen, a photographic competition, cultural events, further education, CDs, DVDs, pens, postcards, posters, pictures, calendars, stickers, books, clothing (T-shirts, sweat-shirts, shirts, etc.), peaked caps, scarves, rain capes, children's bibs, soft toys, snow globes, glove puppets, toys (wood, rubber), jigsaw puzzles, board games, hopper balls, inflatable toys and sweets.
This list had seemed overly ambitious to some initial observers but Flocke's financial worth and publicity pull soon became evident when, on 11 February 2008, Germany's number one tabloid Bild reported in bold letters38 that German crooner Patrick Lindner may have trade mark rights for Flocke and might ‘even earn millions of Euros due to his earlier rights’ in the bear's name. According to Bild's article, Lindner had already filed for trade mark protection for ‘Flocke’ covering goods like sound carriers and sound recordings in 1994.39 A consultation of the German trade mark register soon revealed that Lindner's earlier Flocke trade mark,40 which had indeed been filed in 1994, had already been taken off the register on 8 April 2004,41 a fact which was soon confirmed by his lawyer42 and as such closed this chapter of the Flocke saga after having given Mr Lindner some free publicity.
|
The perils of public naming campaigns |
|---|
Just a few days after the Lindner story had been reported—and discussed in numerous lawblogs43—Flocke made legal headlines again44 but this time it was serious and the matter went to court. Initial media reports suggested that a sweets company from the German Allgäu region had managed to file three applications for Flocke trade marks apparently securing an earlier filing date than the filing date of the Nuremberg zoo's Flocke trade mark application. At the time, a spokesperson for the sweets company was quoted in media reports as saying ‘We liked the name a lot. It was pure instinct to file for trade mark protection.’45 Predictably, the city of Nuremberg, the owner of the Nuremberg municipal zoo, was not impressed and acted swiftly by stopping the sweets company via a preliminary injunction from marketing or selling products under the Flocke brand. The sweets company objected to the preliminary injunction and the case went to full trial at the Regional Court of Nuremberg—Fürth (Landgericht Nürnberg—Fürth). Somewhat predictably, matters were not as straight forward as they had originally seemed and the rather complicated sequence of events—the bear facts—had to be painstakingly reconstructed by the court.
|
The Flocke trade mark dispute |
|---|
In its decision of 7 March 2008,46 the Landgericht Nürnberg, Fürth, established the following facts, which may serve as a lesson to anyone considering trade marking a brand determined by means of a public consultation. In a press conference of 9 January 2008, Nuremberg's mayor, acting for the claimant, invited anyone who was potentially interested in the marketing of the yet unnamed polar bear cub to contact the city. The following day, 10 January 2008, the city of Nuremberg started a naming campaign asking the general public to suggest a name for the newborn cub. Media reports of the same day revealed that the cub's keeper had already nicknamed it Flocke (snowflake). By the end of the naming campaign more than 50,000 suggestions had been received, while the media had continued to use the Flocke nickname. Even before the naming campaign was officially concluded, the claimant applied for trade mark protection for Eisbär Flocke (polar bear snowflake) covering classes 8, 9, 14, 16, 21, 24, 25, 26, 28, 30, and 41 at the German Patent and Trade Mark Office. The court further established that the attorney of record for the claimant had filed a further word mark for Flocke on 10 January 2008 on her client's behalf. The latter mark, which covered goods in classes 9, 16, 21, 25, and 28, was subsequently assigned and officially transferred to the claimant on 1 February 2008. In a press conference of 18 January 2008, the claimant officially confirmed the name Flocke and announced that the city had already filed for trade mark protection for Eisbär Flocke.
The defendant meanwhile, a registered company active, inter alia, in the fields of marketing, logistics and distribution advice and the development, production and distribution of products of all types, had filed three trade mark applications at the German Patent and Trade Mark Office on 13 January 2008: ‘Flocke das Eisbärbaby’ (Flocke, the polar bear baby), ‘Flocke der Eisbär’ (Flocke the polar bear) and ‘Eisbär Flocke’ (polar bear Flocke) covering classes 3, 5, 8, 9, 16, 18, 21, 25, 28, 30, 32, 25, 41, and 43. In a letter of 22 January 2008, the defendant's attorney informed the claimant that any trade mark applications for Flocke in the name of the claimant could only have been filed on 18 January 2008, when the bear's name had been officially determined. As such, the claimant's press release of the same day announcing that the city had already filed for trade mark protection for Flocke was perplexing and it was safe to assume that the defendant owned prior trade mark rights. The letter closed with a request for a written statement by the deadline of 30 January 2008.
The defendant's actions constituted a systematic obstruction of the claimant's freedom to act within the market and as such amounted to unfair practicesThe city of Nuremberg was of the view that the defendant had tried to pre-empt and block its own trade mark applications, with the potential intent of forcing it to pay licensing fees to market Flocke. The defendant's actions constituted a systematic obstruction of the claimant's freedom to act within the market and as such amounted to unfair practices under sections 3, 4 No. 10, 8(1), German Act against Unfair Competition (Gesetz gegen den unlauteren Wettbewerb, UWG). The defendant argued that its Flocke trade mark applications had not been aimed at obstructing the claimant as a competitor. Given the claimant had only announced the cub's final name on 18 January 2008, the cub's nickname had not been an obvious choice when the defendant filed for its Flocke marks on 13 January 2008. Furthermore, the defendant had a concrete intent to use the mark and was planning to develop and license products in various different areas.
Confirming the necessary urgency under section 12(2) UWG, on 28 January 2008 the court granted a preliminary injunction. After a court hearing following the defendant's objection against the preliminary injunction, in its final decision of 7 March 2008 the court ruled that the claimant was entitled to permanent injunctive relief under sections 3, 4 No. 10, 8(1) UWG and further specified the ruling handed down in its preliminary injunction. By way of background information: section 3 UWG contains a general prohibition of acts of unfair competition, which is further fleshed out by a non-exhaustive list of 11 examples of unfair competition in section 4 UWG. Section 4 No. 10 UWG prohibits the systematic obstruction of a competitor's freedom to act within the market, while section 8(1) UWG stipulates the right to apply for an injunctive relief.
The court determined that the city of Nuremberg was a competitor in the sense of the UWG. By deciding to market the cub, the city had left the ambit of sovereign duties (hoheitlicher Bereich) and entered the market as a direct competitor of the defendant. The latter had shown through its actions (trade mark application, letter to the claimant) that it intended to be active in the same market. The court clarified that an obstruction in the sense of section 4 No. 10 UWG was to be assumed in any cases of curtailing the competitive development of a competitor. An obstruction was to be considered systematic where actions were predominantly aimed at disturbing the competitor's development and the advancement of one's own development was only secondary, or when the obstruction went to such an extent that the affected competitor was prevented from adequately performing in the market.
The barrier effect (Sperrwirkung) of a trade mark application, which was per se unobjectionable, could be misappropriated as a means of competitionThe barrier effect (Sperrwirkung) of a trade mark application, which was per se unobjectionable, could be misappropriated as a means of competition, ie to exact distribution rights, to extort compensation or purchase payments or to impose business relations. Citing earlier case law by the Federal Supreme Court,47 the Nuremberg court stated that the filing of a multiplicity of trade marks for very different goods and services could constitute such an obstruction, if there was no concrete intention to use the mark in question (particularly in one's own business or for third parties based on an existing or potential consultation concept) and, where the trade mark application was at least primarily filed for the purposes of claiming compensation or forbearance, should third parties use the trade mark.
Applying these principles, the court found no reasons to doubt a systematic obstruction of the claimant by the defendant. It was common knowledge at the time of the defendant's trade mark application that the city of Nuremberg had the intention to market the birth of the polar cub. The birth had resulted in a huge media interest and the city had asked third parties to submit marketing proposals. The example of Knut had shown that the name of the cub would have a central role in its marketing. It was obvious that whoever secured the exclusive rights in the name could dictate the marketing of the event and profit from its publicity.48 In the view of the court, filing and registering a trade mark for the bear's name established such an exclusive right because it allowed the exclusion of others from using the name in the course of business on the goods and services covered by the mark, as well as dictating the conditions of the marketing. Securing such a prior trade mark right provided the trade mark proprietor with the legal possibility to severely disturb the competition of the claimant, who had contributed considerably to the fact that the bear's name and corresponding trade mark had such great economic worth and attractiveness. Even though the final name had not yet been officially determined when the defendant had filed for its trade mark applications, the name had already been used habitually by the media and there was a high probability that the name would be confirmed by the naming process. Based on these circumstances, it could be concluded that the defendant had chosen the name in the justified speculative hope that it would prevail and would allow the defendant to profit from its great attractiveness. The court further stated that it did not believe the defendant's pleadings that it had not been happy when the city had chosen the name Flocke because it affected its own marketing plans. Despite the court's encouragement, the defendant had neither provided the court with any actual marketing plans nor had it shown any evidence of any concrete endeavours in this regard or at any stage proposed any concrete marketing concepts to the city of Nuremberg. Under these circumstances, it could not be assumed that the defendant had any intention to use the mark. The defendant had filed three trade mark applications, a multitude of marks, covering 14 classes. The specification of goods and services provided by the defendant contained an immense range of products, which by itself allowed the conclusion that the defendant aimed to achieve a wide blocking effect. Further, the court ruled that the trade mark applications had not been based on a ‘concrete consulting need’.49 Even though the defendant's letter of 22 January 2008 did not include an actual cease and desist warning (Abmahung), which would have been useless at that point because the defendant did not yet own a trade mark registration, the letter made it clear to the claimant that the defendant intended to enforce its exclusive rights in case of a final trade mark registration. As such, the claimant could expect that the defendant would use the blocking effect as a means of competition to prevent it from its own marketing efforts and/or to force the claimant to purchase the marks from it or agree to a licensing agreement. The defendant's letter of 22 January 2008, in combination with the trade mark applications, also constituted a clear danger that the defendant intended to obstruct the claimant's marketing of the polar bear cub's birth. The court also clarified that a danger of obstructing the claimant's marketing efforts could only exist in relation to an application of the ‘Flocke’ mark to the goods and services that were reasonably foreseeable (‘typical marketing and licensing opportunities’). According to the court, such typical marketing possibilities relating to Flocke's birth included goods and services such as media products and media services relating to Flocke, advertisement, travel, entertainment and hospitality services, all types of pre-recorded image and sound carriers, media publications, calendars, books, marketing material, games and playthings, game software, etc. as well as other merchandizing articles, such as articles of daily use, food stuffs, and cosmetics.50
|
‘Chilling effect’ of the Flocke decision |
|---|
In the light of the above, the court ruled that the claimant was entitled to injunctive relief under sections 3, 4 No. 10, 8(1) UWG preventing the defendant from marketing or selling ‘typical marketing’ products under the Flocke brand; the relevant applications were eventually removed from the German trade marks register. While the outcome of the Nuremberg ‘Flocke’ court case was still pending, further polar bear trade marks were filed at the German Trade Mark Registry. By 4 March 2008, the number of Flocke applications on the German trade mark register had risen to 41; the latest additions included canny and imaginative composite marks such as ‘Flocke & Knut’ and ‘Knut & Flocke’. It is needless to say that it was not (only) the respective zoos in Berlin and Nuremberg and approved business partners, who filed these applications in order to cash in on Germany's ever growing love for polar cubs. However, the latter marks never matured to registration51 and fewer new applications were filed in the aftermath of the court ruling: the court's common sense approach in the Flocke case had clearly sent out the right message and also taught the city of Nuremberg a valuable lesson in public naming consultations.
|
Fu Long—the Viennese panda cub |
|---|
You would be forgiven if you thought that this bear craze was a very German phenomenon, but a rather similar story unfolded in neighbouring Austria, where little Panda cub Fu Long (Lucky Dragon) was born on 23 August 2007 at the Viennese Schönbrunn Zoo. Being the first Giant Panda to be born in Europe since 1982,52 the bear soon had its own website,53 online video diary,54 theme song and documentary film55 with the Austrian Foreign minister Ursula Plassnik, the bear's godmother, calling it the ‘youngest Ambassador for the protection of species’.56 Like every self-respecting modern cub, Fu Long's name was determined after a public consultation which saw 26,000 entries and a high-profile official naming ceremony on 4 December 2007 which was attended by China's Ambassador to Austria and the General Secretary of the China Wildlife Conservation Association.
|
Consequences of not taking trade mark protection seriously at an early stage |
|---|
It was early February 2008, only a short time after the little bear's first official outing on 29 January 2008, when Austrian media first reported news of a trade mark dispute over Fu Long.57 Even though Schönbrunn Zoo had filed for trade mark protection for the word mark ‘Fu Long’ at the Austrian Patent Office on 30 November 2007,58 other applicants had been quicker. An applicant from the Austrian Kärnten region had already applied for a word-and-device mark for ‘Fu Long’ on 22 October 2007 and secured a registration date of 27 November 2007. The zoo initially appeared to take the matter rather lightly. However, when the Kärnten applicant contacted the zoo and threatened legal action should the zoo use the Fu Long trade mark; the zoo had no choice but to file a cancellation action at the Austrian Patent Office concerning the competing Kärnten word-and-device mark. According to the Austrian Patent Office's newsletter, the Kärnten applicant/defendant missed the deadline for filing a response to the cancellation action and will also be liable to pay Schönbrunn Zoo's costs. Furthermore, should the Kärnten defendant fail to appeal against the cancellation decision within a two-month period,59 Schönbrunn Zoo will be the exclusive proprietor of a Fu Long trade mark registration on the Austrian Trade Marks Register.60
Like the Flocke case, the Fu Long case clearly illustrates the flipside of public name consultations, especially in countries with post-registration trade mark opposition proceedings, such as Austria and Germany, where the respective registries do not conduct any register searches for conflicting earlier marks and allow further identical marks to be registered. A spokesperson for the Austrian Patent Office admitted that the procedure had the ‘potential of conflict’.61 The president of the Austrian Patent Office Friedrich Rödler called the Fu Long case ‘exemplary’ in the way it illustrated ‘the consequences of not taking trade mark protection seriously at an early stage’.62 Paying ‘more attention to legal protection’ could prevent protracted and unpleasant proceedings later on.
Schönbrunn Zoo at least appears to have learnt its lesson. The zoo's deputy director, Gerhard Kasbauer, confirmed that the zoo would seek trade mark protection for the names of the zoo's polar bear cub twins Arktos and Nanuq.63 However, when asked whether he believed that the hype around Knut could be repeated, he answered: ‘With such a marketing strategy ... we would risk losing our credibility as a zoo. The idea of trade marking animals in itself, that is something that is absurd.’64
|
Wilbär—the understated polar bear cub from Stuttgart |
|---|
Visitors queuing to see cub Wilbär.
That things can be done differently can be shown by Germany's latest polar bear cub to make headlines: Wilbär. Unlike Knut and Flocke, little Wilbär's mother Corinna did not abandon the cub and even though Wilbär was born on 10 December 2007, a day before Flocke, Stuttgart Zoo only announced his birth at the end of February 2008. According to media reports, the zoo had intentionally kept quiet about Wilbär's birth to allow the cub to develop normally, citing the media frenzy around Knut as the main reason for this.65 Stuttgart Zoo's director, Dieter Jauch, quickly pointed out that the zoo was ‘not out for the big money’. Despite visitors queuing up for hours to see him, Wilbär's merchandize seems almost humble. He has his official book: Hallo Wilbär!,66 postcards, pasta, and a special weekly TV update on regional television.67 However, the zoo had obviously learnt from the zoos in Berlin and Nuremberg and had the cub's name, a combination of the zoo's name (Wilhelma) and the German ‘Bär’ for bear, registered as a trade mark early on.68 In line with his understated image, Wilbär can only claim four trade mark registrations on the German trade mark register for his name: ‘Wilbär’ and ‘Eisbär Wilbär’ both covering a multitude of goods and services in classes 9, 16, 18, 21, 24, 25, 28, 29, 30, 32, 33, 35, and 41 (in the name of the state of Baden-Wuerttemberg as represented by the zoo) as well as trade mark registrations for ‘wilbär’ in classes 9, 16, 21, 25, 38, 41, and 42 (in the name of a regional television station) and ‘Willi Wilbär’ covering classes 16, 18, 24, 25, 28, and 41 (in the name of a natural person).69
Some of Wilbär's humble merchandise.
|
Bear necessities? |
|---|
Bearing in mind the above, did this Germanic interest in bears come out of nowhere or are there any indications of precedents? What bearings can we expect for the future? After all, Germany is the country that brought the world ‘Gummi Bear’ sweets,70 Steiff teddy bears, and Germany's capital Berlin has a bear in its crest of arms.
A review of recent German case law confirms our suspicion that ‘bears’ have been at the centre of trade mark disputes for quite some time. Notable cases include the Federal Patent Court's decisions in ‘EIS-BÄREN’,71 ‘Schattenriss eines (Teddy)-Bären’,72 ‘SCHOKOBÄRCHEN’.73 Recent cases of interest further include the case ‘Browny v Browny Bear’,74 decided by the Federal Patent Court in September 2006, the case ‘Fruchtbär v Fruchtbärle’,75 decided by the Federal Patent Court in January 2007, ‘Bär v Bären Bäcker Konditorie’, decided by the Federal Patent Court in March 2006,76 and, most recently, ‘Bio-Bär’ decided by the Federal Patent Court in April 2008.77 ‘Der kleine Eisbär’—a case on the distinctiveness of generic book titles78 was decided by the Federal Patent Court in February 2006, and thus before Knut and Bruno made it into the headlines.
Bears, it seems, are a permanent fixture in Germany's news and court decisions and, as such, it is unlikely that bears will go away any time soon, even though sceptics could argue that the market for new polar bear stories should be saturated at some point. In the meantime, the relevant zoos are well advised to take Friedrich Rödler's advice seriously and trade mark their respective cubs as early as possible. Still, to make big headlines and leave multiple paw-prints on the trade mark register, a bear, it appears, has to have a big story: like the ill-fated wandering brown bear Bruno, abandoned Knut, or ‘almost-eaten-alive-by-her-mother’ Flocke. Understated bears like Wilbär, while being attractive for visitors, only manage slightly to scratch the trade mark register.
Let us end by returning to Bruno, the ill-fated wandering brown bear, whose story proves that bear disputes do not even end in death. About a year after Bruno's untimely death, the Italian government demanded a return of Bruno's body, claiming it was Italian state property.79 Even though Germany's Federal government tried to intervene on the side of the Italians, the Bavarian government saw the matter differently. Bruno had died on Bavarian soil and thus the body was theirs to keep. After attempts by controversial German anatomist Dr Gunther von Hagens to exhibit Bruno's plastinated carcass in slices,80 it is now planned to put Bruno on display at a natural science museum near Munich—stuffed and next to the last wild living bear shot in Bavaria in 1853.81
Historical proof: polar bears were already popular in 1950s Germany.
|
Footnotes |
|---|
Correspondence: * Rechtsassessorin, LL.M. (Aberdeen), Dr iur. (University of Tübingen); Email: bclark{at}web.de. The author wishes to thank Professor Dr Helmut Haberstumpf, presiding Judge of the Landgericht Nürnberg-Fürth and Ms Alexandra Foghammer of the Presse und Informationsamt of the city of Nuremberg for their kind assistance. Thank you to Peter Clark for his support and patience.
1 Brown Bear Meets a Tragic End, in: Spiegel Online International of 26 June 2006 at www.spiegel.de/international/0,1518,423629,00.html; Bruno the elusive bear is shot after seven-week chase, in: Times Online of 27 June 2006, at www.timesonline.co.uk/tol/news/world/europe/article679722.ece. 
2 http://blog.brunoderbaer.de and http://www.brunoisttot.de.
3 Such as ‘Bruno der Bär lebt nicht mehr’ (in English: Bruno the bear, he is no more) available at http://de.youtube.com/watch?v=cP5LI5Qh4xU and ‘Bruno der Bär—come on and help me’ available at http://uk.youtube.com/watch?v=G1RibXy343E&NR=1.
4 Games ‘Jagt Bruno’ and ‘Brunos Rache’ (in English: Bruno's revenge) at www.brunoderbaer.de.
5 Mordfall Bruno Bär, in: Readers Edition of 19 July 2006 at http://www.readers-edition.de/2006/07/10/mordfall-bruno-baer.
6 Which prompted some commentators to give Mr Stoiber the nickname ‘Stoibär’ (= Stoibear).
7 Problembär Bruno als Muse, in: Der Tagesspiegel of 5 August 2008, at www.tagesspiegel.de/kultur/literatur/Baer-Bruno;art138,2586452.
8 IM Ortner, Bruno, der Bär (Weishaupt Verlag, 2008) ISBN 978-3-7059-0277-0.
9 G Falkner, Bruno (Berlin Verlag, 2008) ISBN: 978-3-8270-0785-8.
10 German trade mark registration no. 30642771.0 Bruno.
11 Angst um Knut: Der Eisbär und die Giftspritze, in: Frankfurter Allgemeine, FAZ.net of 21 March 2008, at www.faz.net/s/RubCD175863466D41BB9A6A93D460B81174/Doc~ E8B8FD4D0944D4EB68BA4874C4F423464~ATpl~Ecommon~Sspezial.html.
12 Knut day in Berlin as polar bear goes public, in: Reuters Online of 23 March 2007, at http://www.reuters.com/article/environmentNews/idUSL2362537420070323.
13 US-Medien: Knut geht nach Übersee, in: Spiegel Online of 10 April 2007, at http://www.spiegel.de/kultur/gesellschaft/0,1518,476400,00.html; also see Table of Content of Vanity Fair's Green Issue at http://www.vanityfair.com/magazine/toc/2007/toc200705.
14 Knut's a millionaire bear, while he's cuddly, in: guardian.co.uk of 13 May 2007, at http://www.guardian.co.uk/environment/2007/may/13/conservation.theobserver.
15 Berlin Zoo culls creator of the cult of Knut, in: Times Online of 13 December 2007, at http://www.timesonline.co.uk/tol/news/world/europe/article3042791.ece.
16 Haribo product information on ‘Knuddel Knut'sch’ at http://www.haribo.com/planet/de/info/main/presse/popup/content_knut2.html; website visited on 18 August 2008. Author's comment: ‘Knuddel Knut'sch’ is a play on word. ‘Knuddel’ translates into ‘cuddly’, ‘Knutsch’ is a colloquial word and roughly translates into the English word ‘smooch’; see also: King Knut rules the world as baby polar bear becomes a global star, in: The Independent Online of 7 April 2007, at http://www.independent.co.uk/news/world/europe/king-knut-rules-the-world-as-baby-polar-bear-becomes-a-global-star-443673.html.
17 Neues vom Eisbär: Knut und sein Buch, in: Sueddeutsche.de of 26 July 2007, at www.sueddeutsche.de/panorama/artikel/439/125252/; Knut: How One Little Polar Baer Captivated the World by Isabella Hatkoff, Juliana Hatkoff, Craig Hatkoff and Dr. Gerald R. Uhlich, Scholastic Press, New York (November 2007); see also at http://www.dr-uhlich.com/naturachten/polarbearknut/knutthelittlepolarbaer/knutenglish.html.
18 Zweimillionenster Besucher bei Knut, in: Sueddeutsche.de of 25 October 2007, at www.sueddeutsche.de/panorama/artikel/977/139685/.
19 Move over Brad Pitt: Polar Bear Knut to Become Hollywood Star, in: Spiegel Online of 31 December 2007 at http://www.spiegel.de/international/zeitgeist/0,1518,525955,00.html.
20 Berliner Zoo: Streit um Knut, in: Sueddeutsche.de of 23 July 2007, at www.sueddeutsche.de/panorama/artikel/882/124699/.
21 Eine Aktie zum Knut-schen, in: boerse.ARD.de of 5 April 2007, at http://boerse.ard.de/content.jsp?key=dokument_222188; Aktienmärkte: Knut-Boom an der Börse, in: sueddeutsche.de of 2 April 2007 at http://www.sueddeutsche.de/panorama/artikel/402/108294/.
22 Berlin Zoo Stock Leaps as Polar Bear Fever Grows in PlanetArk of 4 April 2007, at http://www.planetark.org/dailynewsstory.cfm/newsid/41236/story.htm.
23 Zoo lässt ‘Knut’ als Marke schützen, in Focus.de of 25 March 2007, at www.focus.de/panorama/welt/berlin_aid_51661.html.
24 Knut soll Klimakatastrophe bekämpfen, in Spiegel Online of 1 May 2007, at www.spiegel.de/wissenschaft/natur/0,1518,480375,00.html. The zoo even set up a holding company to channel the various franchises, called ‘RespectHabitat.Knut’; see Berlin Zoo culls creator of the cult of Knut, in: Times Online of 13 December 2007, at http://www.timesonline.co.uk/tol/news/world/europe/article3042791.ece.
25 Knut—the business bear, in: Spiegel Online International of 5 November 2007, at http://www.spiegel.de/international/zeitgeist/0,1518,482368,00.html; Berliner Eisbär: Knut-Marke kommt Artenschutz zu Gute, in: Focus Online of 17 April 2007, at www.focus.de/panorama/welt/knut/berliner-eisbaer_aid_53813.html.
26 German Patent and Trade Mark Office (DPMA), Annual Report (English Version) for 2007, page 137.
27 Knut erwartet fünfmillionsten Besucher, in: Welt Online of 16 August 2008, at http://www.welt.de/welt_print/arti2334412/Knut_erwartet_fuenfmillionsten_Besucher.html.
28 Gabriel verfüttert 11.900 Euro Steuergeld an Knut, in: Welt Online of 21 August 2008 at http://www.welt.de/politik/arti2355297/Gabriel_verfuettert_11.900_Euro_Steuergeld_an_Knut.html.
29 Zoo-Klage: Landgericht entscheidet über Knut-Millionen, in: Der Tagesspiegel of 16 July 2008, at http://www.tagesspiegel.de/berlin/knut/Knut;art1045,2573534.
30 Some estimates, such as that of Björn Sander of BBDO Consulting, value Knut's worth as high as 7 to 13 million Euros. Please see: Knut krabbelt an die Börse, in: FAZ.net of 3 April 2007, at http://www.faz.net/s/RubF3F7C1F630AE4F8D8326AC2A80BDBBDE/Doc~ E727826DE8B684FFC82EA2F7DB17EAE40~ATpl~Ecommon~Scontent.html.
31 From cuddly cub to climate lobbyist: the contradictions of Knut, in: Times Online of 2 August 2008, at http://www.timesonline.co.uk/tol/news/world/europe/article4446280.ece.
32 Mum ate ‘Baby Knuts’: German zoo under fire after Polar bear cubs die, in: Spiegel.de of 7 January 2008, at www.spiegel.de/international/zeitgeist/0,1518,527184,00.html.
33 UN environment chief becomes German polar bear cub's patron, in: International Herald Tribune of 28 May 2008, at www.iht.com/articles/ap/2008/05/28/europe/EU-GEN-Germany-Polar-Bear.php
34 Animal Rights: Global warming and psycho bears in: The Star of 26 July 2008, at http://www.thestar.com/article/467669.
35 Am Dienstag kommt Flocke ganz groß raus, in: Goettinger Tageblatt Online of 5 April 2008, at http://www.goettinger-tageblatt.de/newsroom/medien/art663,563745.
36 http://www.nuernberg.de/internet/polarbear/merchandising.html as of March 2008.
37 The guide appears to be available in German only and can be retrieved here as a PDF at http://www.nuernberg.de/imperia/md/content/internet/2bm/eisbaer/styleguide_eisbaer_flocke2.pdf.
38 Patrick Lindner: Verdient er bald Millionen mit Flocke?, in: Bild.de of 11 February 2008, at http://www.bild.de/BILD/leute/star-news/2008/02/11/eisbaeren-besitzer-lindner/lindener-eisbaer-besitzer,geo=3736232.html.
39 Does German crooner Patrick Lindner own ‘Flocke’?, in: Class 46 weblog of 11 February 2008, at http://class46.blogspot.com/2008/02/does-german-crooner-patrick-lindner-own.html.
40 German trade mark no. 2076997 Flocke in the name of LINK GmbH covering classes 09, 16, 41.
41 Germany: Next chapter in Flocke saga, in: Class 46 weblog of 19 February 2008, at http://class46.blogspot.com/2008/02/germany-next-chapter-of-flocke-saga.html.
42 Knut und Flocke: Alle wollen mitverdienen, in: Focus Online of 15 February 2008, at http://www.focus.de/panorama/welt/knut-und-flocke_aid_241043.html.
43 Does German crooner Patrick Lindner own Flocke?, in: Class 46 weblog of 11 February 2008, at http://class46.blogspot.com/2008/02/does-german-crooner-patrick-lindner-own.html of 11 February 2008; BÄRENMARK: Patrick Lindner wittert Profit mit Flocke, in: Spiegel Online of 11 February 2008, at http://www.spiegel.de/panorama/leute/0,1518,534391,00.html; Patrick Lindner und Flocke, in Jurablog.de of 12 February 2008 at http://www.jurablogs.com/de/patrick-lindner-und-flocke; Patrick Lindner und Flocke, in: Markenblog.de of 12 February 2008, at http://www.markenblog.de/2008/02/12/patrick-lindner-und-flocke/; Flocke-Marke von Linder weg—Gebühren nicht bezahlt! in: flocke-eisbaer.de of 12 February 2008, at http://www.flocke-eisbaer.de/tag/patrick-lindner/.
44 Knut und Flocke: Alle wollen mitverdienen, in Focus Online of 15 February 2008, at http://www.focus.de/panorama/welt/knut-und-flocke_aid_241043.html.
46 Landgericht Nürnberg- Fürth, case reference: 4HK O 723/08 of 7 March 2008.
47 BGH, GRUR 2001, pages 242–244 (E-Klasse).
48 Insofar as the city's domestic authority in connection with the zoo's premises and the actual property of the cub were not affected.
49 Underlined in the original; in German: ‘konkreter Beratungsbedarf’, please see page 14 of the decision.
50 The court reviewed the goods and services covered by the defendant's mark in detail and pointed out which goods and services were ‘obstructing’.
51 Status of German trade mark register (‘DPMA Info’) as of 19 August 2008.
52 See information given at Tiergarten Schönbrunn's official website at www.zoovienna.at http://diepresse.com/home/panorama/oesterreich/359946/index.do.
53 The Panda baby diary (in English), at http://www.zoovienna.at/e/pandababy_2007.html and its German version ‘Alles über das Pandababy Fu Long’ at Tiergarten Schönbrunn, at www.zoovienna.at. Both websites visited on 18 August 2008.
54 Fu Long im Online Videotagebuch, at http://wien.orf.at/magazin/magazin/trends/stories/223885. Website visited on 18 August 2008.
55 Fu Long, der kleine Panda, at http://tvsales.orf.at/db/db_single?caller=743&ka=docume. Website visited on 18 August 2008.
56 Plassnick: ‘Fu Long is a symbol of the vulnerability of nature and the animal world’. Source: press release of the Austrian Foreign Ministry dated 4 December 2007, at http://www.bmeia.gv.at/en/foreign-ministry/news/presseaussendungen/2007/plassnik-fu-long-is-a-symbol-of-the-vulnerability-of-nature-and-the-animal-world.html.
57 Markenstreit um Fu Long, in: wien.ORF.at of 15 March 2008 at http://wien.orf.at/stories/253800/.
58 Austrian trade mark application no. 243792 covering classes 6, 8, 9, 14, 16, 18, 21, 25, 26, 28, 30, 31, 32, 33, 34, 41, 43, 45; Newsletter No. 3/4 of 2008 the Austrian Patent Office at http://www.patentamt.at/Home/Patentamt/Newsletter/29471.html.
59 The outcome of this case was not yet known when this article was written. The deadline to appeal the cancellation decision ended in September 2008.
60 An even earlier German trade mark application (no. 30767034.1) for Fu Long at the German Patent and Trade Mark Office by a German applicant covering classes 09; 16; 18; 25; 28; 35; 41 and dated 16 October 2007 has in the meantime been removed from the German trade register.
61 Markenstreit um Fu Long, in: Wien.ORF.at of March 2008, at http://oesterreich.orf.at/wien/stories/253800/.
62 Newsletter no. 3/4 of 2008 the Austrian Patent Office, at http://www.patentamt.at/Home/Patentamt/Newsletter/29471.html.
63 Markenstreit um Fu Long, in: Der Kurier of 6 March 2008, at http://www.kurier.at/nachrichten/wien/137270.php (‘I fear we will have to go to the Patent office when naming them, I don't really believe we have any other chance.’); Schönbrunner Eisbären-Zwillingen wurden ‘getauft’, in: Vienna Online of 9 June 2008, at: http://www.vienna.at/news/om:vienna:special-tiere/artikel/schoenbrunner-eisbaeren-zwillingen-wurden-getauft/cn/news-20080609-03330385.
64 Markenstreit um Fu Long, in: Der Kurier of 6 March 2008, at http://www.kurier.at/nachrichten/wien/137270.php.
65 Wilbaer, the latest polar bear to charm German public, in: guardian.co.uk of 16 April 2008, at http://www.guardian.co.uk/environment/2008/apr/16/conservation.poles.
66 Hallo Wilbär! Tierische Geschichten aus der Wilhelma, ISBN 978-3-938023-41-9
67 Wilbär im Fernsehen, weekly update on SWR, at www.swr.de/wilbaer.
68 Polar Bear born in Stuttgart, in: Fox News Online of 28 February 2008, at http://www.foxnews.com/wires/2008Feb28/0,4670,GermanyPolarBear,00.html; News report on Wilbaer by Associated Press of 5 March 2008, at http://ap.google.com/article/ALeqM5hhQQi1WKMMdbmNNE7_bMbrSj6LEwD8V3CQPO3 (as of 5 March 2008).
69 Status of German trade mark register (‘DPMA Info’) as of 30 August 2008.
70 Hans Riegel of Bonn, Germany, invented bear-shaped sweets and the Gold-Bear sweets were introduced by his Haribo company in the 1960s.
71 Bundespatentgericht, 32 W (pat) 081/96 in English: Polar bears.
72 Bundespatentgericht, 32 W (pat) 049/97 in English: Silhouette of a (teddy-)bear.
73 Bundespatentgericht, 32 W (pat) 197/98 in English: Fruitbear v little Fruitbear.
74 Bundespatentgericht 29 W (pat) 25/06.
75 Bundespatentgericht, 32 W (pat) 216/04.
76 Bundespatentgericht 32 W (pat) 4/04.
77 Bundespatentgericht 28 W (pat) 187/07.
78 BPatG GRUR 2006, 593—Der kleine Eisbär (Bundespatentgericht 32 W (pat) 269/03). In English: The little polar bear.
79 Problembär: Italiener wollen ‘Brunos’ Fell, in: Focus Online of 26 March 2007, at http://www.focus.de/panorama/welt/problembaer_aid_51692.html.
80 Kadaver-Gezerre: Hagens will Bruno in Scheiben schneiden, in: Spiegel Online of 28 June 2006, at http://www.spiegel.de/panorama/0,1518,424053,00.html.
CiteULike 
Connotea 
Del.icio.us What's this?
| ||||||||||||||||||||||||||||||||||||||||||||||||||