The I. Civil Senate of the German Federal Court of Justice (FCJ; German: Bundesgerichtshof; BGH) granted the appeal of Lindt & Sprüngli, annulled the second instance decision and held that Lindt & Sprüngli had successfully proven that the golden colour of the “Lindt Gold Bunny” had acquired distinctiveness as a trademark for chocolate bunnies within the relevant public. The decision is an important contribution to the case law regarding an abstract colour mark as a used mark.
Lower instances:
Regional Court of Munich I – Judgement of 15. October 2019 – 33 O 13884/18
Higher Regional Court of Munich – Judgement of 30. Juli 2020 – 29 U 6389/19
Background:
Source: BGH- I ZR 57/08
The defendant is also a manufacturer of chocolate products. During the 2018 Easter season, it also marketed a sitting chocolate bunny in a gold-coloured foil.The applicants are companies of the Lindt & Sprüngli group, Switzerland, which produces high-quality chocolate. One of the plaintiffs’ products is the “Lindt Gold Bunny”, which has been offered in Germany in golden foil since 1952 and in the current shade of gold since 1994. The plaintiffs have sold more than 500 million gold bunnies in Germany over the last 30 years. The “Lindt Gold Bunny” is by far the best-selling chocolate Easter bunny in Germany. Its market share in Germany was over 40% in 2017. According to a traffic survey submitted by the applicants, 70% of the respondents associate the golden hue used for the foil of the “Lindt Gold Bunny” with the applicants’ company in connection with chocolate bunnies.
The plaintiffs are of the opinion that they are the owners of a use mark on the gold shade of the “Lindt Gold Bunny”. The defendant infringed this trade mark by distributing its chocolate bunnies. The plaintiffs claim that the defendant should cease and desist from marketing their chocolate bunnies. They also demand that the defendant provide them with information and seek a declaration that they are liable for damages.
Process history:
The Higher District Court of Munich dismissed the action. It held that the action was unfounded because the plaintiffs were not the proprietors of a use mark under § 4 No. 2 MarkenG (German Trademark Law) for the golden hue of the “Lindt Gold Bunny”. The colour had not acquired a reputation for the product chocolate bunnies.
Ruling of the Federal Court of Justice:
The Federal Court of Justice allowed the plaintiffs’ appeal and referred the case back to the court of appeal for a new hearing and decision.
The applicants have proved that the golden hue of the Lindt golden bunny has acquired a reputation as a trade mark for chocolate bunnies within the relevant public within the meaning of § 4 No. 2 MarkenG. According to the traffic survey submitted, the degree of association of the golden shade used for the foil of the “Lindt Gold Bunny” in connection with chocolate bunnies with the applicants’ company amounts to 70% and thus clearly exceeds the required threshold of 50%. 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.
Nor does it matter whether the public would see this as an indication of origin for the applicants if the shade of gold were used for chocolate bunnies other than the well-known Lindt gold bunny. This is a question of the likelihood of confusion, which only arises in the context of the examination of an infringement of the colour mark. Finally, the fact that the gold tone is used together with design elements of the “Lindt Gold Bunny” that are also known to the public (sitting bunny, red collar with a golden bell, painting and inscription “Lindt GOLDHASE”) does not argue against a reputation of the gold tone. It is decisive that the target public sees an indication of origin in the use of this shade of gold for chocolate bunnies even if it is used together with these other design elements.
In the reopened appeal proceedings, the Higher Regional Court as the Court of Appeal will have to examine whether the defendant infringed the plaintiffs’ use mark on the gold shade of the “Lindt Gold Bunny by distributing their chocolate bunnies packaged in gold-coloured foil.
German press release of July 29, 2021, German Federal Court of Justice Karlsruhe (Bundesgerichtshof Karlsruhe):
https://www.bundesgerichtshof.de/SharedDocs/Pressemitteilungen/DE/2021/2021147.html
Comment:
The Lindt company has been fighting for years to protect its famous “Gold Bunny” by way of trademark protection. Initially, Lindt had tried to register a 3D trademark, but failed in all instances. In the end, the European Court of Justice (ECJ) ruled. In particular, the European judges maintained that the trademark applicant would have had to prove that the mark had become established in all member states of the European Union in order to be able to obtain trademark protection at least on the basis of distinctiveness through use (24.05.2012, Az. C-98/11 P).
Lindt now sought to have the colour gold in the Gold Bunny (shade CIELAB 86.17, 1.56, 41.82) protected as a colour mark. In May 2017, Lindt registered the colour mark “gold” (Pantone Premium Metallics coated 10126 C)” at the DPMA for chocolate bunnies, but did not rely on it before the FCJ in Karlsruhe, the sole issue was whether the gold shade had become established on the market as a result of its long and intensive use, therefore acquired a reputation.
Confiserie Heilemann (Germany) had already filed cancellation proceedings at the Federal Patent Court before the start of the proceedings at the Munich courts, in which it is taking action against the German abstract colour mark Gold for chocolate bunnies registered by Lindt.
Lindt, in turn, sued Heilemann for injunctive relief and damages. The medium-sized manufacturer, which is now part of the German Viba Group, also has seated chocolate bunnies in gold foil in its range. The court has not made a final ruling on whether Heilemann may also sell chocolate bunnies in gold-coloured foil. The case now returns to the Munich Higher Regional Court, which must rule whether Heilemann infringed the Lindt trademark on the grounds that customers could potentially confuse the two brands.
Dr. Petra Westphal
