The claimant Haribo, the German producer of the famous fruit gums “Goldbären”, challenged the distribution of Chocoladenfabriken Lindt & Sprüngli’s chocolate bear wrapped in a golden foil, comprising Lindt’s company name and logo as well as the designation “TEDDY”, the imprint of a teddy’s face, ears and paws and wearing a red ribbon with a heart around its neck. The defendant is a famous chocolate producer, known throughout the IP community for its – so far (in Germany) unsuccessful, and (in Austria) successful – attempts to challenge distribution of a competitor’s chocolate bunny allegedly infringing Lindt’s trademark rights in the shape of the “GOLDEN BUNNY” (reported previously in BARDEHLE PAGENBERG IP Reports 2012/II, 2011/I, 2008/II and 2006/I).

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As reported before (cf. BARDEHLE PAGENBERG IP Report 2013/I), the Cologne District Court upheld the complaint, arguing that there was a serious risk that use of the challenged chocolate teddy will lead to dilution of the claimant’s well-known word mark “Goldbären” (“golden bears”). The Cologne Appeal Court agrees with the defendant’s arguments and overturns the first instance decision. However, it allows a further appeal to the Federal Supreme Court.

The Appeal Court confirms that the claimant’s word mark “Goldbären” is a trademark with reputation. Nonetheless, this does not automatically imply that the trademark enjoys a broader scope of protection against similar product appearances.

As always in trademark infringement cases concerning 3D trademarks, one of the most controversially discussed issues is whether or not the challenged product’s appearance (in particular its shape) will be perceived “as a trademark” by the relevant public, in the present case concerning chocolate products basically the average consumer. As a rule, a sign will be perceived as a trademark if the sign is used as an indication of the commercial origin of the products.

However, when trademarks with reputation are at issue, perception “as a trademark” only requires that the relevant public establishes a certain “link” between the challenged product apperance on the one side and the earlier trademark on the other. Whether or not this is the case has to be assessed irrespective of the intention of the undertaking distributing the challenged product. Remarkably and contrary to this principle, in the present case the Court also considers that it was Lindt’s clearly expressed intention to create a chocolate teddy which was oriented towards its well-known “Golden Bunny”. The latter, undisputed, would refer to the defendant’s undertaking and, thus, be perceived “as a trademark”. Consequently, so the court, it is at least very likely that the appearance of the teddy will also be perceived “as a trademark”.

The Court nonetheless denies a relevant “link” between the conflicting signs in the above mentioned sense, because the conficting signs are not similar enough. Insofar the Court basically applies the same criteria as the District Court, namely whether or not the designation “Goldbären” (“golden bears”) was the obvious, easy and exhaustive designation for Lindt’s chocolate teddy and, thus, whether it was the closest and most fitting description for the product. Taking into account that the overall impression produced by the challenged product is influenced not only by its shape and colour, but also by its other design and word elements as outlined above, the Appeal Court found that the designation “Goldbären” would not meet these criteria.

The Court also rejected Haribo’s argument that Lindt would exploit the reputation of Haribo’s word mark. The Court concluded that Lindt itself was well-known for its delicate chocolate products. The golden teddy would simply follow its well-known “Golden Bunny” which would speak against Haribo’s allegation.

Consequently, use of the appearance of Lindt’s “Teddy” does not infringe Haribo’s trademark rights in the designation “Goldbären”.

With an interim result of 1:1 the final outcome of this dispute at first glance appears to be unpredictable. However, taking into account longstanding trademark law principles the better arguments are on the side of the defendant: It appears to be absolute exceptional that a certain expression which is protected as a word mark is the exhaustive designation for the appearance of a complex product’s appearance, in particular if the product, besides its shape and colour, comprises word and design elements which do not coincide with the protected earlier trademark. Insofar, the Appeal Court – contrary to the District Court – correctly applies the standard test in infringement proceedings regarding the assessment of the overall impression of complex signs and comes to an overall entirely reasonable result.

Altogether, the decision comes somehow like a consolation for the defendant: It is very difficult for Lindt to enforce its 3D trademarks in its famous golden bunny, but at least the product appearance of its teddy seems to be in safe waters regarding conflicts with Haribo’s earlier word marks.