One court, two opinions: “Dubai Chocolate” divides District Court of Cologne

Are manufacturers allowed to call their chocolate “Dubai Chocolate” even if it was not produced in Dubai? This question has been occupying the German courts since the end of last year (For more details on this topic, see our blog post of January 21, 2025). The decisive question here is whether the term “Dubai” is a geographical indication of origin or merely a reference to the recipe. According to Section 127 of the German Trademark Act (MarkenG), geographical indications of origin may not be used in the course of trade for goods that do not originate from that place if there is a risk of misleading consumers as to the geographical origin.

It therefore depends on whether the consumer addressed assumes that the product actually comes from Dubai based on the reference to “Dubai”, whether as a name or based on other associations with the product.

1. Previous case law is not consistent

The first rulings on the subject of “Dubai Chocolate” (all of them provisional decisions in preliminary proceedings) did not reveal any clear tendency. The 33rd Civil Chamber of the District Court of Cologne had issued three preliminary injunctions (Order of December 20, 2024, case no. 33 O 513/24; Order of January 6, 2025 – case no. 33 O 525/24 and 33 O 544/24) which affirmed a deception of origin within the meaning of Section 127 of the German Trademark Act (MarkenG). However, the District Court of Frankfurt a.M. ruled to the contrary, arguing that the average consumer no longer necessarily assumes that the products actually come from Dubai due to the media hype (Order of January 21, 2025 – case no. 2-06 O 18/25). It furthermore argued that the packaging label was in German throughout – unlike in the proceeding before the District Court of Cologne – so that there were no design features to indicate a Dubai origin.

2. Civil Chamber of the District Court of Cologne confirms preliminary injunction

The 33rd Civil Chamber of the Cologne District Court confirmed its injunction of December 20, 2024, with its judgment of February 25, 2025 (case no. 33 O 513/24). According to this judgment, the use of the terms “Dubai Chocolate” and “brings the magic of Dubai directly to your home” is to be classified as misleading within the meaning of Section 127 (1) of the German Trademark Act (MarkenG).

In the opinion of the court, the understanding of the public has not yet changed to such an extent that the public now understands the designation alone – independent of the place of production – as a synonym for a chocolate with a certain special recipe. Although the chamber admitted that part of the public no longer attributes any content of origin to the designation, this part has not (yet) reached the size necessary to assume a generic product name. Such generic product names (such as “Kölnisch Wasser” for perfume or “Dresdner Stollen” for a type of cake) are not protected as indications of geographical origin under Section 126 (2) of the German Trademark Act (MarkenG), because they are only understood as a description of a particular type or kind of product and not as an indication of the geographical origin of a product or service.

Finally, the court stated that a relevant part of the population was still unaware of the hype surrounding “Dubai Chocolate”. The designation was therefore to be understood as an indication of origin and thus potentially misleading, since the chocolate was actually produced in Turkey. The clarifying note on the back of the packaging, “Origin: Turkey”, was not sufficient to eliminate the risk of misconception about the geographical origin of the product.

3. Chamber for Commercial Matters has a different opinion

A day later. Once again, the District Court of Cologne. Once again, “Dubai Chocolate”. And a surprising turnaround. The 4th Chamber for Commercial Matters ruled in a similar case that “Dubai Chocolate” was not a misleading indication of geographical origin but merely a reference to a recipe (Judgment of February 26, 2025 – case no. 84 O 8/25).

The subject of the decision was the “Alyan Dubai Handmade Chocolate” produced in Turkey, which Aldi Süd had offered in its stores since December 2024. A confectionery importer had taken action against this. As late as January 2024, another chamber of the Cologne District Court had ruled in a temporary injunction that the reference to the place of origin on the back of the packaging was insufficient and assumed that there was a risk of consumers being misled.

The judges of the Chamber for Commercial Matters argued, that consumers are now aware that the term “Dubai Chocolate” refers to a recipe and not to a product manufactured in Dubai. Even consumers who, contrary to expectations, have not yet heard of the hype surrounding “Dubai Chocolate” are not led to assume that the product was manufactured in Dubai by this designation. Rather, the completely impartial average consumer assumes a certain method of preparation, in the opinion of the court – as with the majority of composite products (e.g. Black Forest gateau or Hawaiian pizza). Accordingly, he is aware that a recipe is being implemented and that it is primarily the recipe and the composition of the ingredients, namely pistachios, angel hair and chocolate, that are important.

The court left open whether and to what extent a geographical indication of origin can develop into a generic term within a very short period of time due to intensive media coverage. “It can be left open, whether ‘Dubai Chocolate’ has already become a generic term”, since “in this specific case the Chamber does not see any risk of misleading information as to the origin within the meaning of Section 127 (1) of the German Trademark Act.”

4. Conclusion

The contradictory judgments within the same court emphasize that terms such as “Dubai Chocolate” should continue to be used with caution. The 33rd Civil Chamber of the District Court of Cologne has provided manufacturers with two specific suggestions for avoiding possible misunderstandings. Either a different designation (e.g. “Dubai Style”) could be chosen or the actual origin, which differs from the designation of origin, could be clearly displayed for the consumer.

However, the judgments also make it clear that, in the age of social media, the understanding of the public can develop very dynamically and quickly. The market situation must therefore be monitored closely. If more and more market participants were to market products under the designation “Dubai Chocolate” that actually do not come from Dubai, the indication of geographical origin could potentially become a generic product name in the course of 2025.

We will keep you updated on the development of this and similar cases in our blog.