Siebeke Lange Wilbert successfully defends Barilla against sales of incorrectly designated original Barilla products by third parties



Barilla took legal action against the operator of a chain of bargain stores who was selling Barilla products in its shops. Barilla originally intended the pasta goods for the Italian market and had therefore printed the packaging in Italian. The defendant had attached stickers in German to the packaging to designate the foodstuffs, including the list of ingredients and the sales description of the products. Some stickers had been attached askew, or covered the Barilla brand or the product designation.

The court had to clear the principle question of whether the strict legislation for repackaging medicaments developed by the European Court of Justice also applies to the labelling of (basic) foodstuffs imported into Germany.

On 29/07/2010 under case No.: 37 O 9/09, the Düsseldorf Regional Court ordered the defendant to refrain from promoting and selling pasta goods and pasta sauces with labelling attached incorrectly. The Düsseldorf Regional Court thereby agreed with Barilla's arguments and established that the legislation of the European Court of Justice on repackaging not only applies to medicament packaging, but also to (basic) foodstuffs, such as pasta. The ECJ had previously ruled on this for premium (luxury) alcohol beverages.

According to the decision of the Düsseldorf Regional Court, the repackaging/attaching of the stickers to the packaging undertaken by the accused represented an unjustified interference in Barilla's trademark rights for the following reasons: Firstly, the reputation of the Barilla brand was damaged by the attachment of the concrete stickers in question. Secondly, regardless of the design and position of the stickers, the defendant must clearly indicate on the packaging from whom these stickers originate. Thirdly, the brand owner should have been notified of such stickers in advance and, on request, sent a sample of such packaging. Fourthly, the defendant had infringed German law by selling such packaging because it had failed to translate the Italian nutritional table into German.