The Endless Bunny Hunt: Lindt Hops Toward Victory in Trademark Battle
A small hop for chocolate bunnies, an important milestone for Swiss chocolate manufacturer Lindt & Sprüngli. In a decision dated July 29, 2021, the German Federal Supreme Court held that the famous gold-colored foil of Lindt’s chocolate bunny, launched in 1952 and remained unchanged since 1994, enjoys trademark protection acquired by use based on its undisputable reputation with the relevant public.[1] This decision marks an encouraging outcome for Lindt & Sprüngli in its long-standing battle in Europe for the protection of its “Lindt GOLDHASE” (“Lindt Gold Bunny”).
For several years, the Swiss company Lindt & Sprüngli (“Lindt”), a manufacturer of high-quality chocolate, has been vigorously trying to protect its chocolate bunny packed in a golden foil.[2] In 2004, Lindt filed a Community three-dimensional trademark application for the goods “chocolate and chocolate products.”[3]The applied mark represented the shape and outer appearance of a chocolate bunny wrapped in a gold foil with a red ribbon and a small bell.[4] The European Union Intellectual Property Office (“EUIPO”) – formerly the Office for Harmonization in the Internal Market (“OHIM”) – denied protection based on lack of distinctiveness[5] The Board of Appeals and the General Court affirmed the decision on appeal.[6] Lindt further appealed to the Court of Justice of the European Union (“CJUE”).[7] In 2012, the CJUE affirmed the prior decisions, ruling that the combination of the shape, the colors and the pleated ribbon with a small bell lacked distinctiveness since their characteristics were not sufficiently different from those of the basic shapes commonly used for chocolate products, especially chocolate bunnies.[8] Furthermore, the evidence submitted showing the reputation of the applied mark in three countries – namely, the United Kingdom, Austria and Germany – were not sufficient to demonstrate the acquisition of distinctiveness through use in the European Union as a whole.[9] As a result, after eight years of legal dispute, Lindt consequently lost its infringement proceedings against Riegelein’s similar gold-coloured Easter bunny in Germany.[10] The Higher District Court of Frankfurt denied the action of trademark infringement based on the lack of likelihood of confusion between Lindt’s gold shaped chocolate bunny and Riegelein’s slightly more bronze colored bunny.[11]
Against this background, Lindt changed its strategy and focused on protection as an unregistered color mark.[12] In 2018, the Swiss company brought an action for trademark infringement before the District Court of Munich against the German confiserie-maker Heilemann alleging that the gold tone of its packaging foil is well known through years of intensive use in Germany.[13] In support of its claims, Lindt argued that its golden chocolate bunny has been sold in Germany since 1993 and its market share was more than 40% in 2017.[14] According to Section 4 no. 2 of the German Trademark Act, an unregistered sign may enjoy trademark rights if it can be proven that it acquired reputation amongst the public for the relevant goods.[15] Whilst the District Court of Munichsupported this view, the decision was reversed in appeal.[16] In its 2020 decision, the Higher District Court Munich held that recognition of reputation for color mark is granted when such color is used as the “house mark”.[17] Considering that Lindt had been selling chocolate bunnies also wrapped in different colored foil, the court deemed that it seems far-fetched that the public would perceive the golden color of Lindt chocolate bunnies as an indication of origin, and deny thereafter the existence of any unregistered trademark rights for the golden color of the foil.[18]
However, in a recent decision, the Federal Supreme Court confirmed the existence of an unregistered abstract color mark in Lindt’s favor in relation to chocolate bunnies.[19] The survey submitted by Lindt showed that over 70% of the interviewees associated the golden color with the Swiss chocolate manufacturer in Germany, which clearly exceeded the required threshold of 50%.[20] The court confirmed that for proving reputation of an abstract color mark in Germany, it is not required that the color is used as house mark on all or numerous products.[21] Finally, the use of the gold together with recognizable design elements of the “Lindt Gold Bunny”, like a red collar with golden bell, painting, and inscription “Lindt GOLDHASE”, did not diminish the reputation of the gold tone.[22] The case has been remitted to the Higher Regional Court Munich, which now has to examine whether the gold-colored foil used by the defendant for chocolate bunnies infringes Lindt’s color mark.
Through this decision, the German Federal Supreme Court makes clear to all trademark owners that a color mark does not require that such color has to be used for a large number of products or even as a “house mark” to enjoy protection as an unregistered trademark. Indeed, to be protectable as an unregistered trademark in Germany, the owner shall demonstrate that the color mark is highly recognizable by a large part of the public.
Footnotes
