As Easter approaches, thoughts inevitably turn to egg-shaped chocolate. The taste is obviously important, but the egg shape adds value (otherwise wouldn’t we all buy chocolate only in bars?). Confectionery producers are always looking to increase market share by making their products visually attractive to consumers, using not only eye-catching packaging but sometimes also a special shape for the actual products. And when the sweets giants come up with a product presentation that appeals to their customers, they do not take kindly to imitation.
Some legal protection for the appearance of products and their packaging is available from copyright and (registered and unregistered) design laws. Trade mark protection differs from these other forms of ‘intellectual property’ in that it can confer perpetual legal protection, i.e. without any time limit, which makes it an attractive proposition for confectionery companies. Traditionally, trade mark laws have been used to register the names or logos of traders or their products, but in recent times it has – at least in principle – been possible to register more exotic types of trade marks in the UK, Europe and elsewhere, including slogans, colours, shapes and even sounds such as jingles. A common feature of trade mark laws everywhere is that, to be registrable as a trade mark, a sign must possess a certain degree of distinctiveness. This is a problem for anyone wishing to register these more exotic forms of trade mark, as consumers are generally not used to perceiving them as an indication of origin (the essential function of a trade mark) – at least not without being educated about that, through use of the mark on the products, in publicity, etc.
This is the very thorny problem that has been occupying tribunals in various European countries for the past decade in the “Gold Bunny” (Goldhasen) litigation involving the Swiss firm Lindt & Sprüngli and its competitors such as the Bavarian company Riegelein.
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Lindt has successfully registered as an EU-wide trade mark their bunny as shown above (i.e. in its gold and red finery and bearing the Lindt branding), although so far its efforts to achieve EU-registration of the same mark without the imprinted wording have failed. When Lindt sued Riegelein for trade mark infringement in the German Federal Court the judges decided that, since other chocolate sitting bunnies are marketed in Germany during the Easter period, the shape of a sitting bunny would not be perceived as an indication of origin – so no infringement was found. In a similar case in the Austrian Supreme Court, however, Lindt succeeded in obtaining a finding of infringement against another competitor, Hauswirth.
Looking to extend their brand into the lucrative Christmas market, Lindt introduced gold-wrapped chocolate reindeer and, in 2011, teddy bears.
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Lindt then found the boot was on the other foot when another confectionery giant, Haribo, sued them for infringement of their long-standing trade mark registration of the word GOLDBÄR (in English, golden bear). The Cologne Court initially decided in Haribo’s favour, finding that Lindt’s product was an infringing ‘visual representation’ of Haribo’s GOLDBÄR trade mark used on its gummy bear sweets. However, on appeal this was overturned, the higher court deciding that, although a word mark could in principle be infringed by the use of a 3D design, Lindt’s branding on the packaging was sufficient evidence of the origin of the goods, so avoiding confusion. It was also considered relevant that Lindt’s gold bunnies are well known in the German market.
It seems unlikely that we have seen the last of trade mark disputes involving chocolate animals. Who can tell which manufacturers will ultimately enjoy the sweet taste of success?