From the manufacturer's point of view, positive test results about its own product are always a cause for celebration. After all, they confirm the efforts that have gone into its production and quality. However, such reviews also have a sales-promoting effect. It is not uncommon for the sales generated with the product to increase enormously after the product test is published. For many consumers, a positive or negative test verdict from trustworthy bodies such as Stiftung Warentest or Öko-Test is a decisive sales argument. Sometimes consumers base their choice of product solely on the test results. Therefore, advertising with test results is worthwhile for manufacturers and retailers alike.

From a legal point of view, however, there are some pitfalls to consider when advertising with test results. This starts with the question of whether the logo and the result may be used at all for one's own product advertising or whether a licence agreement must be concluded if necessary (e.g. in the case of test results of Stiftung Warentest and advertising with its seal). Care must also be taken not to expose oneself to the accusation of misleading advertising under Section 5 (1) UWG or unfair comparative advertising under Section 6 UWG. Case law has developed some principles on when such advertising is permissible under competition law and when it is not. According to these principles, it must be taken into account, among other things, how the reference of the test is to be stated, to which product the test refers and how the product performed in relation to the competition. It may also be relevant how old the test result is and whether more recent tests have already been carried out.

The Öko-Test III decision

The last point was recently dealt with by the Federal Court of Justice (BGH ruling of 16.12.2021 - I ZR 201/20) - via detours into trade mark law - in our IP case of the month. This much in advance: the judgement is not really surprising.

The background is a legal dispute between the consumer magazine "Öko-Test" (plaintiff) and a manufacturer of toothpaste (defendant). In 2005, Öko-Test rated one of the defendant's toothpastes "very good" in a comparative test and allowed the defendant to advertise with the Öko-Test mark on the basis of a free licence agreement. Three years later, Öko-Test conducted another comparative test for toothpaste, this time with different test criteria and without one of the defendant's products. This did not stop the latter from still labelling the previously tested toothpaste with the Öko-Test mark and the test result from 2005 in the following years and - as assumed by the courts - from marketing it as an EU trade mark at least until after registration of the mark. Öko-Test defended itself against this, arguing, inter alia, that advertising with the test seal infringed its now existing trademark rights. The defendant was tapping into the good reputation of the consumer magazine's trade mark in order to draw attention to the quality of its product.

The BGH now ruled that Öko-Test was correct in this assessment. In the present case, advertising with an older test result was misleading and thus unfair. The consumer magazine therefore had a legitimate interest in ensuring that its well-known mark was not used for advertising with an outdated test result so as not to impair consumer confidence in the reliability of its tests.

The manufacturer of the toothpaste argued that the test result from 2005 for its toothpaste had not changed. Its product had not been the subject of the more recent test and the original test result had not been overtaken by technical developments, scientific findings or substantially changed test criteria. However, the BGH circumvented this objection by basing the misleading and ultimately the exploitation of reputation on the new test. Öko-Test had not taken over any guarantee for the continuing validity of the earlier test result by means of new test criteria and evaluation standards. On the other hand, Öko-Test had an interest in monitoring advertising with its brand to see whether it also met its new test-related standards. Therefore, the consumer magazine could also decide whether, in a more recent test of the product group with changed test criteria, the product subjected to an earlier test could continue to be represented as having been tested by it by using its trade mark.

What the ruling means for practice

As foreseeable as this legal assessment may have been, it is not undisputed. It has still not been decided by the highest court whether advertising with an older test result is actually permissible under competition law if the initially tested product is later no longer tested with changed test criteria. By taking a diversion via trademark law and the question of exploitation of reputation, the Federal Supreme Court has elegantly avoided this dispute. This is not very pleasing for the user of the law. A clearer statement would have been desirable. However, the ambiguity is likely to have rather less impact on advertising with test ratings if, as in this case, the ratings come from the big well-known consumer magazines. This is because their logos and signs are regularly protected by trademark law.

From the point of view of the advertising company, the following things are to be taken away:

  • Before using someone else's test result to advertise the rated product, consult your own legal department or a lawyer. Without prior legal advice, there is a risk of "catching" a warning or even an injunction including damages, etc.
  • Depending on the test institute, a (licence) agreement may be required in order to use the test seal for advertising. Such a contract may also be required if the test seal itself is not protected under trademark law.
  • The decision illustrates the importance of brand protection in general and the advantages of a well-known brand in particular. It is therefore worthwhile to invest time and energy both in one's own products and in a comprehensive brand strategy.

By the way: The judgement also provides important insights for the case that the child has already fallen into the well. If, as in the present case, only gratuitous licences to the infringed trade mark were granted, the assessment of damages on the basis of a so-called licence analogy is not possible. If no payment is demanded, it is not possible to calculate what would hypothetically have been obtained if the infringer had concluded a licence agreement with the owner instead of using the trade mark without authorisation. However, the proprietor can still calculate his damages on the basis of the profit (so-called infringer's profit) that the other party has achieved due to the use of the trade mark (usually distribution of products with the other party's sign).