"Dubai Chocolate": First Sales Bans in Germany - Cologne District Court Prohibits the Sale of Chocolate that was not Manufactured in Dubai

This is the question that has been hotly debated among trademark lawyers in recent months: Are manufacturers allowed to call their chocolate "Dubai chocolate" even if it was not produced in Dubai?

A German court has now dealt with this issue for the first time.  Retailers had argued that consumers would only see the term "Dubai chocolate" as a reference to the type of chocolate or the recipe of the chocolate.

However, the 33rd Chamber of the District Court of Cologne came to a different conclusion - at least for the time being - and held that consumers had been misled pursuant to Section 127 of the German Trade Mark Act (MarkenG). In the three specific cases, the court found that the challenged products gave the false impression of having been manufactured in Dubai, although this was not the case.

1. Legal Background

According to Section 127 MarkenG , indications of geographical origin such as "Dubai" may not be used in the course of trade for goods that do not originate from this place if there is a risk of the geographical origin being misleading. Accordingly, the German Federal Court (BGH) considered the term "Himalayan salt" to be misleading if the salt is not actually mined in the Himalayan massif, but only in a neighboring lower mountain range (BGH, judgment of March 31, 2016, case no. I ZR 86/13 - Himalaya-Salz)

The decisive question here is whether the targeted consumer assumes that the indication ("Dubai") in relation to chocolate, whether as a name or due to other associations with the product, understands it as originating from Dubai.

2. First Decisions of the Cologne District Court – Misleading Understanding due to the Product Name, Packaging and Advertising Texts

The 33rd Civil Chamber of the District Court of Cologne has now issued three first interim injunctions against dealers of "Dubai Chocolate" (Order of December 20, 2024, case 33 O 513/24; Orders of January 6, 2025 - case no. 33 O 525/24 and no. 33 O 544/24).

In the opinion of the court, the three products each gave the false impression of having been produced in Dubai in the specific case:

The District Court of Cologne held the following circumstances, among others, decisive for a deception on the geographical origin within the meaning of Section 127 MarkenG:

• Product name "Dubai Chocolate" / "The Taste of Dubai"
• English product names and foreign-language product descriptions on the front and back of the packaging;
• Reference to the "international sea freight" of the product (on the back);
• Advertising promises such as "this chocolate brings the magic of Dubai directly to your home" or is enriched “with a touch of Dubai".

According to the court, the small indication on the back of the packaging that the chocolate is actually produced in Turkey ("Origin: Turkey" or "of Türkiye") was not apt to exclude the misconception about the geographical origin of the product.

3. District Court of Frankfurt disagrees with the District Court of Cologne

In a brand-new decision by the District Court of Frankfurt issued on 21 January 2025, the Frankfurt Court came to a different conclusion than the District Court of Cologne and rejected an application for a preliminary injunction against LIDL's ‘Dubai Chocolate’:

Unlike the District Court of Cologne, the District Court of Frankfurt found that - due to the media hype on the chocolate in recent months – the average German consumer was aware that “Dubai chocolate” only referred to a type of recipe and therefore would not assume that the products actually came from Dubai. The Frankfurt Court therefore denied a deception of geographic indication within the meaning of Section 127 MarkenG.

4. Key Take Away for Your Company

• Always use geographical indications of origin with caution. This is especially true if the product actually comes from a different geographical area.
• Whether the public see the designation as a geographical indication of origin or only recognizes it as a generic product name (e.g. "Wiener Schnitzel") is a question of the individual case.
• In addition to the product name, all use circumstances (including packaging and advertising) are decisive.
• A clear reference to the actual country of production (e.g. a large bumper sticker on the front of the packaging) may help to counteract a deception of origin.

The decisions of the Cologne District Court and the Frankfurt District Court are so far only provisional decisions in preliminary proceedings. A final decision by judgment is still pending.

Nevertheless, for the time being, terms such as "Dubai chocolate" should only be used with caution. The chocolate manufacturer Lindt has reacted quickly and renamed its "Dubai Chocolate" into "Dubai Style Chocolade".

We will be happy to advise you on how to avoid risks when using geographical indications.

We would like to take this opportunity to thank Jens Marcus Epp, who joined us during his legal clerkship, for his great support with this article.