Recently, so called “probiotic” or “prebiotic” comestibles are widely discussed and praised due to their attributed features of being stimulating for the bowel’s function and the body’s defences. A monopolization of these terms by means of trademark protection regularly fails because of a lack of distinctive character and the need to keep the trademark free (cf. §8 (1), No. 1 and 2 of German Trademark Law (MarkenG)). All the more valuable are so-called “expressive” trademarks, such as “Praebiotik“ or “Probiotik“, which have been registered for a manufacturer of baby food in Germany (DE39618494, DE39620358, DE302009003123) and the European Union (EU) (EM250159, EM9720467, EM383919, EM9612227).
Third persons who are bothered by such health-related expressive trade marks and who do not want to solely rely on appeal proceedings or cost intensive trademark cancellation proceedings now can use Art. 2 (2) of the Regulation on nutrition and health claims (EG) 1924/2006 as a further weapon (see also News of November 13, 2013). The potential of this weapon is demonstrated by a recent BGH decision (file number I ZR 178/12 of February 19, 2014). The BGH already considered the use of the trademarks “Praebiotik® + Probiotik®“ on a baby food product to be an unallowable health claim in the sense of Art. 2 (2) of the regulation. According to the BGH, „Praebiotik® + Probiotik®“ alludes to the features “probiotic” and “prebiotic”, i.e. to the capability of stimulating the natural bowel’s function and the body defences. The suggested correlation between the ingredient of the comestible and the state of health of the consumer was sufficient to affirm an unallowable health claim.