Date: 4 October 2021
Lindt & Sprüngli (Lindt) group is a manufacture of chocolates products. They sued a Bavarian confiserie Heilemann because they sold chocolate Eastern bunnies in gold foil. The plaintiffs were of the opinion that they are the owners of a use mark on the gold shade of the "Lindt Gold Bunny" and based their rights on a non-registered trade mark for its golden colour acquired through use in Germany. They also claimed that the defendant should cease and desist from marketing their chocolate bunnies. Additionally, they also seek a declaration that the counterpart is liable for damages.
Lindt's chocolate bunny in its gold foil packaging and red bow with bell.
The other side, Bavarian confiserie Heilemann is also a manufacturer of chocolate products. The defendant also marketed a sitting chocolate bunny in a gold-coloured foil during the 2018 Easter season with representation as follows:
Heilemann's chocolate bunny product sold during Easter 2018.
The Higher District Court Munich had rejected the infringement action against a competing product denying trade mark protection for the gold-coloured foil. It held that the action was unfounded because Lindt was not the owners of a use mark pursuant to § 4 No. 2 MarkenG for the golden hue of the "Lindt Gold Bunny". The colour shade had not acquired a reputation for the product chocolate bunnies.
LG Munich I - Judgment of 15 October 2019 - 33 O 13884/18
OLG Munich - Judgment of 30 July 2020 - 29 U 6389/1
The Federal Supreme Court (BGH) in its decision of 29 July 2021 (Case I ZR 139/20) allowed the plaintiffs' appeal and it decided that the golden hue of Lindt's is a well-known chocolate Easter bunny which indeed has acquired a reputation as a trade mark for chocolate bunnies within the relevant public. According to Section 4 No. 2 MarkenG, trade mark protection arises from the use of a sign in the course of trade to the extent that the sign has acquired a reputation as a trade mark within the public concerned.”
The BGH based its findings on the several evidences provided by the plaintiff. Firstly, "Lindt Gold Bunny" has been offered in Germany in golden foil since 1952. The actual shade of gold has reminded unchanged since 1994. The plaintiffs provided evidences that over past 30 years, they have sold more than 500 million gold hares in Germany. What is more "Lindt Gold Bunny" is by far the best-selling chocolate Easter bunny in Germany with a market share of over 40% (2017). All these arguments were supported by the traffic survey which confirms that 70% of the respondents attribute the golden shade used for the foil of the "Lindt-Goldhase" in connection with chocolate bunnies to Lindt. This number clearly exceeds the threshold of 50%, which is required for the distinctive character of colour marks.
According to the BGH the colour had thus established itself as a so-called use mark and the fact that Lindt does not use the gold as the house colour for all its products is not relevant for the case. See for example for the following products:
Also the defendant arguments that the bunny can still be recognised by other characteristic features such as the red collar with little bells was not taken into consideration by the court. The acquisition of reputation does not require that the colour mark is used as the "house colour" for all or numerous products of the company.
By the decision of BGH, the case went once again back to the Higher District Court Munich, as the trade mark infringement still has to be clarified.
Federal Supreme Court - Judgment of 29 July 2021 - I ZR 139/20
This was not the first case where Lindt tried to stop competitors from marketing chocolate bunnies in a gold foil. The European Court of Justice (ECJ) has put an end to Lindt’s hopes of securing a EU trade mark in 2012. The long dispute has started in October 2005 when Lindt applied for a EU trade mark registration of its gold foil wrapped chocolate rabbit with a red ribbon and small bell. The examiner refused the mark by stating that the mark was devoid of any distinctive character and the evidences of acquired distinctiveness submitted by the applicant was related only to Germany. In the decision from 24 May 2012 (in the case C-98/11 P Chocoladefabriken Lindt & Sprüngli AG v Office for Harmonisation in the Internal Market (OHIM)), the ECJ denied trade mark protection for the shape of the gold foil wrapped chocolate bunny.
Also in the decision of Higher District Court Frankfurt (Judgement of 27 October 2011 – 6 U 10/03), an attempt to enforce Lindt‘s EU trade mark protecting the shape of the chocolate bunny including the wording “LINDT Goldhase” against competitor’s gold foil wrapped chocolate bunny finally failed in Germany. The court decided that there was no likelihood of confusion between trade marks of the parties.
Higher District Court Frankfurt
It will be interesting to see if the infringement will be this time confirmed by the Higher District Court Munich. In any case, the Federal Supreme Court's decision is good news for the trade mark owners who may try to enforce it rights of non-registered trade marks in Germany. The decision gives also guidelines on evidences which should be provided as a support of this kind of claims.
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