The fast food giant thought it would be fun to call its special bun with 3 sausages from Nüremburg the “Nürnburger,” but the Nüremberg Guild of Butchers thought they had got there wurst (sorry!). Osborne Clarke Cologne’s Martin Pachl samples the strength of the competing brand claims.
Who: McDonald’s, HOWE Wurstwaren KG, Hans Kupfer & Sohn GmbH & Co KG, Nürnberger Guild of Butchers and the Society for the Protection of the Nürnberger Rostbratwürste
When: July 2010
Law stated as at: 31 July 2010
Since July 5, 2010 the 1,361 German McDonald’s restaurants have been offering a new premium product called “Nürnburger”. This is the name of a burger bun with 3 original sausages from Nuremberg. Due to the fact that Nuremberg (in German ‘Nürnberg’) is famous for its grilled sausages (“Nürnberger Rostbratwürste”), McDonald’s took a wordplay consisting of “Nürnberg” and “burger” as the name for their new product.
This wordplay “Nürnburger” was in fact registered as a German word-trademark in the year 2000 for sausages (class 29) by Hans Kupfer & Sohn GmbH & Co KG. The company is the manufacturer of the original Nuremberger sausages.
The sausages for the McDonald’s “Nürnburger” are produced by another “sausage giant”, HOWE Wurstwaren KG owned by Uli Hoeneß (the former manager of FC Bayern Munich) and others. For the commercial launch of the “Nürnburger” the Hans Kupfer & Sohn authorised HOWE and McDonald’s to use its registered trademark “Nürnburger” for their burger. With the approval of Hans Kupfer & Sohn, now HOWE has (June 2010) also filed an application to register the term “Nürnburger” as German trademark in class 30, so that the term “Nürnburger” will be protected for both the sausages (class 29) and the bun (class 30).
McDonald's use of the "Nürnburger" trademark and the latest trademark application cause problems for the Nuremberger Guild of Butchers.
First, Manfred Seitz, the head of the Guild saw the danger that the reputation of the famous sausages from Nuremberg will be damaged by the American fast food burger. For him, the “Nürnburger” of McDonald’s does not bear any relation to Nuremberg, its just American style fast food. Of course, traditional sausages in a ciabatta-burger-bun might not be everybody’s cup of tea, but McDonald’s is satisfied with the sales figures of the “Nürnburger”.
The central issue raised by the “Nürnburger” is that the Guild of Butchers wants to use the name “Nürnburger” for its own advertising campaign. A year ago a designer created postcards for the Guild to promote the little sausages from Nuremberg. One of the postcards shows three Nuremberger sausages in a bun with the slogan “THE ORIGINAL NÜRNBURGER” underneath.
Now the Guild fears that they have to stop this campaign due to the trademarks of Hans Kupfer & Sohn und HoWe. They had just started their campaign and were very surprised by the name which was chosen for the McDonald’s product. Since HOWE is a member of the Guild and even belongs to “The Society for the Protection of the “Nürnberger Rostbratwürste” HOWE’s course of action irritated the other members of both the Guild and the Society.
Now the Guild is confronted with the trademarks of third parties and on the face of it, there seems to be no way the Guild can fight the trademark of Hans Kupfer & Sohn. It was registered long before the Guild came up with their “Nürnburger”-postcard-idea, so as the signs are identical, the trademark holder and the authorised companies would seem to be well placed to take legal action against the Guild.
The only way the Guild might have been able to argue against the older trademark would be to raise the plea that the trademark of Hans Kupfer & Sohn had not been used for a long time, which can cause the expiration of the trademark. But this argument would not be successful, because now the trademark is being used by McDonald's with the holder’s consent in connection with the covered goods.
The risk caused by the lately filed trademark covering the buns (class 30) is not minor.
Although the Guild had used the term “Nürnburger” a year before the trademark application was filed by HOWE, this company can take legal action against the Guild as well. The recent usage of the word “Nürnberger” by the Guild may not be of much use to them in combating HOWE. It could only be pleaded by them successfully if the Guild could prove that the HOWE trademark is abusive or that the Guild has acquired an own (local) trademark through the usage of “Nürnburger” for a certain product. In the case at hand, this might be difficult since the Guild used the term just on a postcard. Also, any opposition by the Guild against the trademark application of HOWE might well fail. The Guild has no obvious rights of its own in the term “Nürnburger” which could legitimise an opposition.
Why this matters:
So McDonald’s and HOWE are ahead in the battle for the name “Nürnburger” and continuing with the “Nürnburger”-advertisement will raise trademark issues for the Guild. Also, legal action taken by the Guild against the owner of the trademarks will probably not be successful, so the best answer to the “Nürnburger”-problem for the Guild will be an amicable arrangement with the trademark holders.