Lindt and the famous Gold Bunny win again
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, the red bull and the puma.
This time, Lindt seeks to derive rights from a non-registered trademark for its golden color acquired through use in Germany. Lindt had filed a main action against confiserie Heilemann, which also sells a sitting Easter bunny in golden foil.
The Munich Regional Court granted Lindt claims based on a contour-less color trademark for the color gold that was acquired through use for chocolate bunnies. Lindt successfully argued that they sold more than 500 million Gold Bunnies in Germany in the last 30 years and that it is by far the best-selling chocolate Easter bunny in Germany. Its market share in Germany was over 40% in 2017. The court affirmed a trademark through use as Lindt could additionally rely on an opinion poll, in which more than 70% of the consumers associated the color “gold” with the chocolate bunnies of Lindt.
The Munich Court of Appeals however lifted the decision and argued that the degree of allocation of the color gold to Lindt solely resulted from the exceptional reputation of the Gold Bunny as a specific product. Further, the court held that Lindt does not use the color gold as corporate color across multiple products and that the allocation rates were not achieved because of the use of the color gold as a trademark but more likely because of the use of the combination of the color gold and the shape of the product. The court also based its decision on the fact that Lindt also produces chocolate bunnies in other colors.
The golden Federal Court Ruling
In its ruling announced on July 29, 2021, the German Federal Court of Justice confirmed that Lindt acquired a trademark for its color gold through use for chocolate bunnies. The Swiss manufacturer had proven that far more than the required 50 percent of potential buyers associated the gold color with Lindt. Moreover, the court clarifies that the use of the color for one specific product – and not for the entire product line – can be sufficient for the existence of a contour-less color trademark acquired through use.
However, the court has not decided whether Heilemann’s bunny constitutes an infringement of Lindt’s trademark. The case will go back to the Munich Higher Regional Court, which now has to evaluate a potential likelihood of confusion.
Previous decisions regarding the Gold Bunny
For almost two decades, this Easter basket staple has been occupying the German and European courts. In numerous decisions, the German courts evaluated the likelihood of confusion between the three-dimensional EU trademark of the Gold Bunny and another manufacturer's sitting chocolate bunnies wrapped in gold foil.
In a dispute lasting from 2002 to 2011, Lindt took litigation against the chocolate manufacturer Riegelein because of the use of its chocolate bunny. Likelihood of confusion was ultimately denied with the argument that both the shape and the color of the plaintiff's trademark were only weakly distinctive and that there was no likelihood of confusion due to the additional different word components.
In 2009, the CJEU decided (CJEU, C-529/07) on a referral from an Austrian Higher Regional Court concerning the registered three-dimensional EU trademark of the Gold Bunny, as the defendant had filed counterclaims in an infringement action arguing that filing a trademark application for a product shape that was also used by other manufacturers at the time of the application was made in bad faith. In 2012, CJEU (CJEU, C-98/11 P) had once again to deal with the Gold Bunny, this time with the registrability of its shape. The court ruled that the molding of the Gold Bunny cannot be seen as a source indicator due to its customary nature in the industry.
Unregistered trademarks and Protection for contour-less colors
CJEU acknowledged in the “Libertel” decision (CJEU, C-104/01) in 2003 that contour-less colors 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, one has to take into account that the target public does regularly perceive a color as an indication of origin of the identifying company and therefore, with a few exceptions, a color is devoid of distinctive character.
The requirements for acquiring a German trademark through use for a contour-less color are very high. Section 4 No. 2 of the German Trademark Act demands that the (used) sign has 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 provision of an opinion poll.
Turning Magenta into Gold
In the "Magenta” decision (BGH, I ZR 23/01), the German Federal Court of Justice specified the requirements for protection of color 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 taken into account. However, it requires – in any event – a high secondary meaning for the acceptance of a use mark for a sign consisting of a color without spatial limitation.
In the present “Lindt” case, the German Federal Court of Justice pointed out that a secondary meaning does not require that the color is used as the "corporate color" for all or many products. The fact that the color gold is used together with the well-known design elements of the Lindt Gold Bunny (seated rabbit, red collar with golden bell, painting and the inscription "Lindt Goldhase") does not exclude that the color gold has acquired a secondary meaning. It is decisive that consumers will perceive the gold color as an indication of origin for chocolate bunnies even if used together with these other characteristic elements.
Consequently the German Federal Court of Justice lifted the decision and referred the case back to the Court of Appeals, imposing 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-colored 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 quite possible to be granted trademarks acquired by use that originally were not protectable.
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