FCJ Trademark protection of the colour gold of the “Lindt-Goldhasen” (Lindt Gold Bunny) Decision from 29 July 2021 – I ZR 139/20

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

G1/19 v. 10.03.2021

Decision G1/19 of the Enlarged Board of Appeal on the patenting of computer-implemented simulations and designs

 

G1/19 v. 10.03.2021

The Enlarged Board of Appeal of the European Patent Office (EPO) has ruled that the established case law on computer-implemented inventions also applies to computer-implemented numerical simulations and designs of a system or process. In doing so, it clearly opposes the Board’s approach in the referral decision T 0489/14, according to which a technical effect achieved by a simulation requires at least a direct link to physical reality. The Enlarged Board of Appeal clarifies in its decision that it will maintain its established approach to the assessment of inventive step, known as the COMVIK approach.

Background

In the referral decision T 0489/14, the invention (European patent application No. 03793825.5) describes the modelling and simulation of movements of a single pedestrian within an environment, for example within a building. A plurality of these simulated movements of a pedestrian can then be part of a simulation of a movement of a group of pedestrians, for example, to better assess evacuation scenarios.

In its decision, the board emphasized that a technical effect must at least require a direct link with physical reality, such as a change in or a measurement of a physical entity. The board could not see such a direct link in the claimed method of calculating the trajectory of hypothetical pedestrians moving through a modelled environment (para. 11). Furthermore, the board saw a certain analogy to a method of testing by simulation as in the decision T 1227/05 (Infineon) and considered that, applying the reasons for the decision set out there, some or all of the steps of the simulation method would contribute to a technical effect of the invention and therefore could not be ignored when assessing inventive step (para. 14 and 18 in the decision T 0489/14).

Since, contrary to the approach developed in T 1227/05, the board tended to consider the subject-matter according to claim 1 to lack inventive step over a general-purpose computer, it considered this to be a legal question concerning the interpretation of Articles 52(2) and (3) and 56 EPC and therefore of fundamental importance (para. 17 and 19).

The Technical Board of Appeal 3.5.07 submitted the following three questions to the GBK in accordance with Article 112(1)(a) EPC:

  1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?
  2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?
  3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

In G1/19, the Enlarged Board of Appeal has now given final answers to all three questions. Question 2 was split into two sub-questions 2A and 2B, with the Enlarged Board of Appeal stating in its decision that it could not admit the first part of the second question (question 2A), as the existing COMVIK approach was already sufficient to provide an answer here.

The COMVIK approach was applied in the decision T 641/00 (OJ 2003, 352). It is a conventional application of the problem and solution approach where the differences with respect to the closest prior art are determined and only those that contribute to the technical character are considered for inventive step. It is well established that non-technical elements do not contribute to inventive step (Case law of the Boards of Appeal, I.D.9.1.3 b)).

Regarding the decision 1227/05, the Enlarged Board of Appeal has taken the view that calculated numerical data reflecting the physical behaviour of a system modelled in a computer could not establish the technical character of an invention in accordance with the COMVIK approach, even if the calculated behaviour adequately reflected the behaviour of a real system underlying the simulation. Thus, the decision T 1227/05 decision represented only an exceptional case where such calculated effects could be considered as implied technical effects (para. 128).

With respect to question 1, the Enlarged Board of Appeal states that computer-implemented simulations are computer-implemented processes which usually comprise a mixture of technical and non-technical features and therefore the criteria developed in the COMVIK approach could be applied. Thus, like any other computer-implemented invention, simulations could be patentable if an inventive step can be based on features that can contribute to the technical character of the claimed simulation process. Thus, exclusion a priori from patent protection could not be ruled out for any group of computer-implemented inventions.

With respect to question 2B, the Enlarged Board of Appeal states that a simulation is necessarily based on the principles underlying the simulated system or process. Even if these principles could be described as technical, the simulation would not necessarily be technical in nature. If purely technical principles were sufficient for simulation, then computer-implemented simulations would hold a privileged position within the wider group of computer-implemented inventions without there being any legal basis for such a privilege (para. 141).

Question 2B was therefore answered in the negative by the Enlarged Board of Appeal, which means that even in the case of numerical simulations it has to be checked in each individual case whether the usual “technicality” criteria for computer-implemented inventions are met.

Furthermore, the Enlarged Board of Appeal states in its reasoning that if the fact that a simulated system is based on non-technical principles necessarily means that the simulation cannot have a technical character, this would lead to discrimination against particular groups of numerical simulations without there being any legal basis for such discrimination. In view of this, the Enlarged Board of Appeal has concluded that it is neither a sufficient nor a necessary condition that a numerical simulation be based, at least in part, on technical principles underlying the simulated system or process (para 142).

According to the understanding of the Enlarged Board of Appeal, question 3 refers to claims in which a design process is expressly mentioned, in particular a process for verifying a design. Also for this case, the questions are to be answered in the same way. In particular, the Enlarged Board of Appeal did not see any need here for the application of special rules if a simulation is claimed as part of a design process.

The headnotes to the questions of law referred to the Enlarged Board of Appeal are as follows:

  1. A computer-implemented simulation of a technical system or process that is claimed as such can, for the purpose of assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer.
  2. For that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process.
  3. The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.

Conclusion

With its decision, the Enlarged Board of Appeal has confirmed the application of the principles of the COMVIK approach and thus supported the EPO’s established case law on computer-implemented inventions. It also did not follow the strict approach of the decision T 0489/14, but considers the criteria of inventive step for a claim to a computer-implemented simulation of a technical system or process to be fulfilled even if the claim does not describe features that directly interact with a physical entity.

Overall, it appears to be becoming increasingly important for applicants to disclose and claim simulation or design processes in the context of a particular and specific technical input or output, or a use of the results of the simulation or design process. However, since simulation and design processes often run on conventional computer hardware, it is now even more difficult for applicants to protect them independently of such a context.

Also, the accuracy of the simulation may be a factor that may have an influence on the technical effect beyond that of the implementation of the simulation and thus must be taken into account when assessing inventive step under Art. 56 EPC. To avoid objections under Art. 83 EPC, the applicant should carefully consider how much disclosure regarding a simulation and design method must be included in an application. A single specific implementation example may not be sufficient in the future to sufficiently support the patent claims within the meaning of Art. 83 EPC.

 

Dr.  Petra Westphal

 

 

Munich I District Court, decision of 19.01.2021 – 21 O 16782/20

CJEU referral of Munich Regional Court regarding the question of the legal validity of the patent in injunction proceedings

 

Munich I District Court, decision of 19.01.2021 – 21 O 16782/20

The 21st Civil Chamber of the Munich I District Court, which is responsible for patent law, referred the following question on the availability of preliminary injunctions in patent disputes to the Court of Justice of the European Union (CJEU) in Luxembourg  in a so-called preliminary ruling dated January 19, 2021 (Case No. 21 O 16782/20):

Is it in line with Article 9(1) of Directive 2004/48/EC for the Higher Regional Courts having jurisdiction at final instance in proceedings for interim relief to refuse in principle to grant interim measures for infringement of patents if the patent in dispute has not survived opposition or nullity proceedings at first instance?

Directive 2004/48/EC concerns the enforcement of intellectual property rights.

Background:

Since the “Harnkatheterset” decision of the Düsseldorf Higher Regional Court (judgment of April 29, 2010, Case No. I-2 U 126/09), the granting of a preliminary injunction based on a patent has been governed by the principle that, in addition to a claim to an injunction (infringement of the patent) and grounds for an injunction (urgency), there must also be prima facie evidence that the legal validity of the patent for injunction is sufficiently assured. Accordingly, in order to establish sufficient prima facie evidence of the patent infringement, it is necessary that the legal status of the patent is sufficiently secured. This was generally affirmed if the patent had positively survived opposition proceedings or nullity proceedings. Deviations from this principle are only permissible in certain exceptional circumstances. For example, where the defendant has previously contributed its own third-party observations in respect of validity during the granting authority’s examination phase; where there is general recognition of the validity of the patent in the market – for example, where licenses have already been granted to well-known licensees and/or there is an absence of legal challenge to validity despite infringement litigation, where it is not appropriate for the applicant to wait for the outcome of the opposition or nullity proceedings due to extraordinary circumstances, e.g. due to the market situation. However, the exceptional cases are generally applied restrictively and are thus factually rather theoretical in nature.

With the decision “Leiterklemme” (judgment of December 12, 2019, Ref. 6 U 4009/19), the Munich Higher Regional Court also gave up its previous case law and followed the case law of Düsseldorf.

The existing case law of the Higher Regional Courts of Mannheim, Düsseldorf and Karlsruhe follows in particular from the fact that a considerable number of patents are either entirely or at least partially revoke or restricted in nullity proceedings before the Federal Patent Court (BPatG) or in opposition or appeal proceedings before the European Patent Office (EPO), but at the same time the economic impact of an preliminary injunction, which can be enforced without  security, can be considerable for the defendant.

However, the District Court in Munich considers this practice to be incompatible with the Enforcement Directive 2004/48/EC (decision of January 19, 2021, Case No. 21 O 16782/20) and therefore contrary to European law.

In particular, this practice violates Art. 9(1) of the Enforcement Directive, which is intended to ensure that a provisional measure can be ordered to prohibit the continuation of a patent infringement. However, this would be made impossible, particularly in the case of patents that have just been granted, if first instance validity proceedings were required for this purpose. This is because both opposition and nullity proceedings are only possible after the patent has been granted, and thus patents that have just been granted may not yet have gone through these proceedings. Also, many patents granted some time ago have not yet gone through such first instance validity proceedings at the time of the request for the preliminary injunction, and also the patent proprietor could not have any influence on whether third parties file an opposition against the grant or file a nullity action. Thus, the enforcement of the patent by way of provisional measures is at the end hence not ensured.

In addition to the district courts in Düsseldorf, Mannheim and Karlsruhe, there are nine further district courts which have subject-matter jurisdiction for patent and utility model matters in the Federal Republic of Germany. Although these courts are generally called upon less frequently, the court in Hamburg, for example, does not seem to require the secured legal validity of the patent-in-suit as a rule so far.

Against the background of this inconsistent practice, it therefore seems to be the time that this practice will be clarified fundamentally before the European Court of Justice.

 

Dr. Petra Westphal

Further constitutional complaints against the German Unified Patent Court legislation

After two more constitutional complaints have been submitted to the Federal Constitutional Court (BVerfG) at the turn of the year 2020/21 (Ref .: 2 BvR 2216/20 and 2 BvR 2217/20), the BVerfG asked Federal President Frank-Walter Steinmeier to wait with the execution of the law.

In a second attempt the Bundestag passed the unamended draft bill for the Unified Patent Court with a two-thirds majority at the end of November 2020, and in December 2020 the Bundesrat also approved this law with the required two-thirds majority.

The Unified Patent Court (UPC) as an international organization based in Luxemburg consists of a Court of First Instance, a Court of Appeal and a common Registry. The Court of First Instance comprises a central chamber as well as local and regional chambers. In Germany, a section of the central chamber is established in Munich and one local chamber each in Düsseldorf, Hamburg, Mannheim, and Munich.

Already in 2017 the Bundestag had approved the Agreement (“the Act of Approval”) on a Unified Patent Court (EPGÜ-ZustG) with a simple majority. A constitutional complaint was filed against the Act of Approval, whereupon in February 2020 the BVerfG declared the ratification law null and void due to formal deficiencies, as the law was not passed with a majority of two-thirds in both the Bundestag and the Bundesrat (Ref.: 2 BvR 739/17). This had necessitated a new vote on the Act of Approval.

The European Parliament had already passed the EU unitary patent in December 2012, and it was a long and arduous road until it finally seemed within reach. All what was missing for it to enter into force was the countersignature of the Federal Government, the execution by the Federal President and publication in the Federal Law Gazette. Until now, it was assumed that ratification could be completed by the end of 2021. According to the EU Commission, it could therefore have been expected that the “period of provisional application” of the unitary patent could begin in 2021., The new system was supposed to be fully operational as of  2022. Now, a further delay of the procedure seems unavoidable.

Furthermore, it still remains to be seen how the Brexit and also the revocation of the EPC ratification by the UK will affect the establishment of the Unified Patent Court. A new location for the section of the Central Division which originally should be located in London has to be found and as consequence it will probably be necessary to adjust the Agreement. Italy is considering Milan as a possible location for the section of the Central Division. The section of the Central Division for patent litigation which was planned in London is responsible for the important areas of human necessities, chemistry and metallurgy. Temporarily, the two remaining units in Paris and Munich will take over these tasks.

Outlook

The further course of the still pending ratification of the law by the Federal President seems uncertain at present. However, if the Unified Patent Court is launched as planned, the transitional provision under Art. 83 UPCA must be observed, according to which actions for infringement or for a declaration of invalidity of a “classical” European patent can be brought either before the Unified Patent Court or before the national courts.

The applicant or proprietor of a European patent may exclude the jurisdiction of the Unified Patent Court by declaration according to Art. 83(3) UPCA (so-called opt-out). For further information, please contact us here.

 

Dr. Petra Westphal