District Court of Cologne Decision: Misleading Advertising – Dubai Chocolate Must Come from Dubai
I. In two recent rulings (Decision dated 20 December 2024, Case No. 33 O 513/24; Decision dated 6 January 2025, Case No. 33 O 525/24), the District Court of Cologne (DC Cologne) decided that chocolate products that are not manufactured in Dubai and do not have a geographical connection to Dubai may not be labelled or advertised as „Dubai Chocolate.“
II. The plaintiff, an LLC based in Germany, which does not produce „Dubai Chocolate“ itself but imports, in particular, a „Habibi Bar“ from Dubai, filed for interim injunctions against two companies that marketed chocolate products under the names „Dubai Chocolate“ or „Dubai-Schokolade,“ even though these products were not actually produced in Dubai. The packaging included phrases such as „with a touch of Dubai“ or „bringing the magic of Dubai directly to your home.“
III. The DC Köln considered the use of the terms „Dubai Chocolate“ and „Dubai-Schokolade“ as misleading to consumers according to Section 127 (1) of the German Trademark Act (MarkenG) and thus upheld a claim for injunctive relief under Section 128 (1), 127 (1) MarkenG in conjunction with Section 8 (3) No. 1 of the Unfair Competition Act (UWG). A claim under Section 127 (1) MarkenG exists when a geographical indication is used that is likely to mislead the relevant public regarding the actual origin of the goods. This requires that there is no actual connection to the stated origin and that the use is deemed unfair in commercial practice. Misleading is deemed to occur when a significant part of the relevant public forms a false impression about the geographical origin of the product.
In this specific case, the terms „Dubai Chocolate,“ „The Taste of Dubai,“ and „with a touch of Dubai“ create the impression for the average consumer that the chocolate was made in Dubai, which makes the risk of misleading credible. It is assumed that the chocolate comes from Dubai and was imported to Germany. Labels such as „Product of Türkiye / Produkt von Türkiye“ on the back of the packaging cannot counteract this impression due to their inconspicuous placement and small font size, which are often overlooked.
IV. For cross-border trademark issues between Germany and the United Arab Emirates, it is crucial to also examine aspects such as prior registration and trademark protection in both legal systems. A thorough review of the respective trademark regulations and existing registrations is essential to avoid legal conflicts and ensure trademark protection.
Companies should carefully review whether the geographic names used in product labelling and promotion accurately reflect the actual origin. Otherwise, legal consequences for misleading consumers may arise.
