An egg-themed trade mark dispute for Easter

This topical case in Germany caught my eye over the weekend. If you’ve had a surfeit of eggs over Easter, you may already be hesitating to read further, but this dispute is not about confectionery (or bunnies). Instead the subject is a product which is known in the UK by its Dutch name: advocaat.

Perhaps more often thought of at Christmas than Easter, advocaat is an alcoholic drink made from eggs, sugar and brandy, and it's the main ingredient in a Snowball cocktail. With commendable clarity, it is called “Eilikör” or “egg liqueur” in German. Verpoorten is a long-established German producer of advocaat, and as long ago as 1966 they registered the trade mark “Ei, Ei, Ei – VERPOORTEN” in Germany. A second registration of “Eieiei” was secured in 1979. “Ei” is pronounced like “eye” in English and the effect of the mark “ei ei ei” is an expression of surprise – think of Bart Simpson’s “¡Ay, Caramba!” and you’ll get the idea.

Verpoorten were unimpressed when competitor Nordik launched a pack of five flavoured advocaats under the slogan “Ei, Ei, Ei, Ei, Ei”. Proceedings were brought at the court in Düsseldorf. Despite the longevity and extensive use of Verpoorten’s trade marks, the court took the view that there are sufficient differences between their marks and Nordik’s branding. “Ei”, or “egg”, is unequivocally descriptive of the product, and Verpoorten therefore did not have the right to prevent competitors from using it.

Given that “Ei” is descriptive, how then did Verpoorten manage to register “EiEiEi” as a trade mark for an egg-based product? Their earlier registration includes the Verpoorten company name, which will have made it distinctive enough overall for registration. As a non-German attorney I speculate that their “Eieiei” mark, applied for 12 years later, was perhaps enough of a play on words to qualify it for registration.

Nordik had applied to register “Ei, Ei, Ei, Ei, Ei” as a trade mark in 2020 but “failed miserably”, according to press coverage. The application received an objection from the German intellectual property office that it was descriptive and devoid of distinctiveness, and so it never achieved registration. That official standpoint will have supported Nordik’s position in court, and possibly they even applied in the expectation of a refusal, to give them some reassurance around their plans to use the mark. Either way, Nordik must surely now be thinking that the overall outcome is… eggscellent.