Car manufacturer BMW successfully challenged coffee retailer Tchibo’s use of the term “MINI” for coffee machines and coffee cups (Decision of the District Court of Frankfurt/Main of August 18, 2018, docket number 2-03 O 288/17).

Competing on the market for capsule-based coffee machines, Tchibo had thought of yet another model for its “Cafissimo” series of coffee machines. The compact-sized model (height: 22.30cm) was advertised and marketed as the “MINI” and “Cafissimo MINI” coffee machine respectively. Additionally, Tchibo offered XL-sized coffee pots in a “MINI Edition”.

This attracted the attention of the Munich based car manufacturer that has – for many years ­ successfully marketed the famous “MINI” car. Invoking its trademark rights, BMW argued that Tchibo had taken unfair advantage of the repute of its famous mark by using the term “MINI” in capital letters in its advertisement for coffee machines and coffee pots. According to the car manufacturer, the image transfer was possible because coffee machines are today considered “lifestyle products” and lifestyle products are also being marketed under the iconic “MINI” brand. BMW itself and in cooperation with other companies markets and sells coffee-related articles, e.g. coffee pots with a “MINI” imprint.

Tchibo based its defense on the argument that its “MINI” machine was indeed of small size and that the market commonly referred to the smaller versions of capsule-based coffee machines as “Mini-coffee machines”. The coffee retailer argued that the term “MINI” was used in a descriptive way and not as an indication of origin.

This did not convince the Frankfurt Court: The decision acknowledges the fact that BMW has continuously marketed the “MINI” brand in capital letters and that Tchibo used this spelling in its advertisement. The term “MINI” in capital letter was used by the coffee retailer as an indication of origin, e.g. “The new MINI…”, “the Cafissimo MINI”, “introducing the MINI-grey” and, in particular, “MINI Edition” on XL-coffee pots. The additional use of Tchibo’s trade name and of “Cafissimo” as a trademark for its coffee machine series does not change this result. “Cafissimo” is the common element of a series of marks, whereas “MINI” is considered as the concrete name of the coffee machine.

Penned by Tobias Schönberger of KLAKA Rechtsanwälte

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