On July 29, 2021, the Supreme Court issued its ruling (ZR 139/20), which confirmed that the gold color of the Lindt Golden Rabbit is eligible for unregistered trademark protection in Germany.
After years of Lindt struggling to protect her chocolate bunny wrapped in gold foil, the Supreme Court has now paved the way for future third party infringement lawsuits.
The Lindt & Sprüngli Group produces high quality chocolates, one of its products being the Lindt Golden Rabbit. In Germany, Lindt has been wrapping the product in gold foil since 1952 and in the current gold shade since 1994. Over 500 million gold rabbits have been sold in the country over the past 30 years, making it the world’s largest. best-selling Easter chocolate in Germany. rabbit with a market share of over 40% in 2017. A consumer survey submitted by Lindt showed that 70% of those surveyed associated the golden color with Lindt when used in connection with chocolate bunnies.
However, various trademark offices around the world have denied Lindt’s 3D trademark protection for a chocolate bunny sitting in Class 30.
In 2012, the Court of Justice of the European Union even ruled that a mark for the shape and presentation of the golden rabbit lacked distinctive character (case C-98 / 11P). As a result, after eight years Lindt lost his infringement proceedings against the similar golden Easter bunny from Riegelein (Frankfurt Court of Appeal, October 27, 2011, case 6 U 10/03).
In 2018, Lindt sued another chocolate maker, which marketed a sitting chocolate bunny wrapped in gold foil at Easter 2018. Lindt claimed to have unregistered trademark rights acquired through the use of the golden color of its product.
In the background, unregistered trademark rights can be acquired through use in Germany if the sign (in this case an abstract color mark) has become known as a trademark and thus has acquired secondary meaning in the circle concerned salesperson.
The trial decision was in favor of Lindt. However, in 2020 the Munich Court of Appeal overturned the decision and found that Lindt did not have such unregistered trademark rights in Germany for the color gold in connection with chocolate rabbits (Case 29 U 6389 / 19). The court said Lindt had not established a secondary meaning of the color itself for chocolate bunnies. On the contrary, the secondary meaning arose only from the extraordinary reputation of the specific product.
Lindt appealed to the Supreme Court, which had to rule on the relevant factors to establish secondary meaning to abstract color marks.
The Supreme Court upheld Lindt’s unregistered trademark rights for its gold color in connection with chocolate bunnies.
Although the press release (not the full decision) is available, the conclusion of secondary significance appears to be based on the consumer survey showing a 70% degree of association between Lindt and the golden color used in connection. with chocolate bunnies.
In addition, the Supreme Court confirmed that the secondary meaning does not require that the abstract color mark be used as the home color for all or various products offered by a business.
Apart from this, the Supreme Court held that it was irrelevant whether the relevant public still considers the color as an indication of origin for Lindt, even if the gold color is used for other rabbits in chocolate. Rather, it would be a question of likelihood of confusion and trademark infringement.
Finally, it does not matter that the golden color is used with other design elements of Lindt’s golden bunny, namely the sitting bunny, the red collar with a golden bell, the painting and the inscription “Lindt GOLDHASE”, and that these are also well known to the public. This does not preclude a secondary meaning of the color itself as long as the color is recognized as an indication of origin.
The case has been sent to the Munich Court of Appeal, which must now decide whether Lindt’s gold-colored mark was in fact infringed by the third party’s golden rabbit.
In any case, although the details remain to be seen, the Supreme Court’s ruling is very welcome, as it appears to significantly strengthen the position of trademark owners who are trying to enforce rights over unregistered non-traditional trademarks in Germany.
Yvonne Stone, Jana Bogatz
D Young & Co srl
This article first appeared in Global Brand Review. For more information, please visit https://www.worldtrademarkreview.com/corporate/subscribe
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