The German Federal Court (Bundesgerichtshof, “BGH“) now decided in the “Goldbaer” dispute. Haribo’s well-known “Goldbären” (= “golden bears“) branded gummy bears could not prevail over Lindt & Sprüngli’s chocolate “Gold Teddy”. In essence, the BGH finally held that Lindt & Sprüngli’s chocolate product (as shown above) was not confusingly similar to Haribo’s word-marks “GOLDBÄR” and “GOLBÄREN” (see the BGH’s press release regarding docket no. I ZR 105/14 – Goldbär – as of today, the complete decision has not yet been published).

In this context, Presiding Judge Wolfgang Büscher said that the BGH entered uncharted territory when answering the crucial question whether a three-dimensional product may even infringe upon a word-mark (c.f. Die Welt, 23 September 2015).

In Austria, this case might have been decided differently, even though the Austrian Supreme Court (Oberster Gerichtshof, “OGH“) often looks to the BGH, especially when no similar domestic case-law exists: Namely, and already in 2006, the word-mark “SIERRA Der Tequila mit dem Hut” (= “SIERRA the tequila with the hat“), IR 541.549, was invoked against a tequila bottle “wearing” a three-dimensional black plastic sombrero on its bottle-cap. Thus, the question whether a three-dimensional product may actually infringe upon a word-mark literally is an “old hat” in Austria.

In the Austrian tequila dispute, the OGH came to the following conclusions when granting Sierra Tequila’s preliminary injunction motion and thus confirming the confusing similarity between the three-dimensional product and the word-mark “SIERRA Der Tequila mit dem Hut”, irrespectively of whether the Plaintiff’s Mark(s) were to be qualified as being well-known in Austria (OGH, 9 August 2006,4Ob119/06p – Sierra Tequila):

4.2 Previously, the OGH already confirmed “cross-over confusing similarities” between the word-mark “Tiere mit Herz” [= “animals with a heart”] (4 Ob 302/86 = ÖBl 1986, 77 – Tiere mit Herz) and the heart-emblem affixed to a plush-teddy well as between the word-mark “Ritter” [= “knight”] and a device-mark showing a knight holding a shield and a spear on a horse (4 Ob 13/94 = ÖBl 1994, 227 – Ritter/Knight). 

4.3 The present case is similar indeed. Everyone who knowns the Plaintiff’s advertising slogan reffering to the tequila with a hat will, if he/she sees the Defendant’s tequila, assume that this is the Plaintiff’s product, because the Defendant’s product also is wearing a hat. Equally, it is to be assumed that he/she settles for the Defendant’s product when requesting a “tequila with the hat”.

With a view to future disputes, however, it yet remains to be seen whether the OGH rather follows the German “Goldbären”-judgment or the “Sierra Tequila” remains the precedent in Austria.