Munich Regional Court
Munich Court of Appeals
Federal Court of Justice
For more than a decade, Lindt's gold bunny has been one of the big four in the IP litigation jungle, along with the crocodile (Lacoste), the red bull (Red Bull) and the puma (Puma).
This time, Lindt sought to derive rights from a non-registered trademark for its golden colour acquired through use in Germany. Lindt filed a main action against Confiserie Heilemann, which also sold a sitting-down chocolate Easter bunny in golden foil.
The Munich Regional Court granted Lindt claims based on a contourless colour trademark for the colour gold that had been acquired through use for chocolate bunnies. Lindt successfully argued that it had sold more than 500 million gold bunnies in Germany in the past 30 years and that the gold bunny was by far the best-selling chocolate Easter bunny in Germany. Its market share in Germany was over 40% in 2017. The Munich Regional Court affirmed a trademark through use as Lindt could additionally rely on an opinion poll, in which more than 70% of consumers associated the colour gold with Lindt's chocolate bunnies.
However, the Munich Court of Appeals lifted the decision and argued that the degree of allocation of the colour gold to Lindt resulted solely from the exceptional reputation of the gold bunny as a specific product. Further, the Munich Court of Appeals held that Lindt did not use the colour gold as a corporate colour across multiple products. It also held that the allocation rates had not been achieved because of the use of the colour gold as a trademark, but more likely because of the use of the combination of the colour gold and the shape of the product. The Munich Court of Appeals also based its decision on the fact that Lindt produced chocolate bunnies in other colours as well.
In a ruling announced on 29 July 2021, the Federal Court of Justice confirmed that Lindt had acquired a trademark for its gold colour through the use of the colour for chocolate bunnies. The Federal Court of Justice held that the Swiss manufacturer had proven that far more than the required 50% of potential buyers associated the gold colour with Lindt. Moreover, the Federal Court of Justice clarified that the use of the colour for one specific product – and not for the entire product line – was sufficient for the existence of a contourless colour trademark acquired through use.
However, the Federal Court of Justice has not decided whether Heilemann's bunny constitutes an infringement of Lindt's trademark. The case will go back to the Munich Regional Court, which must now evaluate a potential likelihood of confusion.
Previous decisions regarding Lindt's gold bunny
For almost two decades, this Easter basket staple has been occupying the German and European courts. In numerous decisions, the German courts have evaluated the likelihood of confusion between the 3D EU trademark of the gold bunny and other manufacturers' sitting-down chocolate bunnies wrapped in gold foil.
In a dispute lasting from 2002 to 2011, Lindt took litigation against chocolate manufacturer Riegelein because of its use of a chocolate bunny. A likelihood of confusion was ultimately denied on the grounds that both the shape and the colour of the plaintiff's trademark were only weakly distinctive and that there were additional different word components.
Unregistered trademarks and protection for contourless colours
The European Court of Justice acknowledged in the Libertel case(1) in 2003 that contourless colours could be protectable signs within the meaning of EU trademark law if they embody a graphically representable sign and are suitable for distinguishing the goods and services of a company. However, it must be considered that the target public regularly perceives colours as an indication of the origin of the identifying company and, therefore, with a few exceptions, colour is devoid of distinctive character.
The requirements for acquiring a German trademark through use for a contourless colour are high. Section 4(2) of the Trademark Act demands that the used sign must have acquired "public recognition as a trademark" within the affected trade circles. For signs that are not perceived as a source indicator, the plaintiff must prove a higher recognition rate, which would be sufficient to overcome absolute grounds of refusal in a formal trademark application process. As main evidence for a secondary meaning, German case law still demands the provision of an opinion poll.
Turning magenta into gold
In the Magenta case,(2) the Federal Court of Justice specified the requirements for protection of colour trademarks acquired through use. However, it held that the necessary secondary meaning of a sign is not determined solely by a certain percentage. The circumstances of the individual case must also be considered. However, it requires a high secondary meaning for the acceptance of a use mark for a sign consisting of a colour without spatial limitation.
In the present case, the Federal Court of Justice pointed out that a secondary meaning does not require the colour to be used as the corporate colour for all or many products. The fact that the colour gold was used together with the well-known design elements of the Lindt gold bunny (ie, a seated rabbit, a red collar with a golden bell, a painting and the inscription "Lindt Goldhase") did not exclude the fact that the colour gold has acquired a secondary meaning. It was decisive that consumers will perceive the gold colour as an indication of origin for chocolate bunnies, even if used together with these other characteristic elements.
Consequently, the Federal Court of Justice lifted the decision and referred the case back to the Munich Court of Appeals, requiring the appeal judges to examine whether the defendant violated Lindt's trademark on the gold tone of the Lindt gold bunny by selling their chocolate bunnies wrapped in gold-coloured foil.
The new decision is remarkable because it is already difficult to establish the existence of a trademark acquired by use with originally protectable signs. It is all the more extraordinary that Lindt has succeeded with an originally non-protectable sign. Thus, it can be concluded that with similarly high allocation rates as Lindt was able to prove, it is possible to be granted trademarks acquired by use that were originally not protectable.
For further information on this topic please contact Holger Gauss or Philipp Strommer at Grünecker by telephone (+49 89 21 23 50) or email ([email protected] or [email protected]). The Grünecker website can be accessed at grunecker.de.