Germany: Two bears meet in court – Federal Supreme Court (BGH) substantiates the relation between word marks and 3D marks

The German Federal Supreme Court (BGH) on 23rd September 2015 decided on a dispute between the Swiss chocolatier Lindt and the German sweets manufacturer Haribo (case ref.: I ZR 105/14). The decision will be of interest to all of you with a sweet tooth. The court denies likelihood of confusion between Lindt's golden chocolate Teddy and the "GOLDBÄREN" ("Gold Bears") word mark protected for Haribo's well-known and widely loved fruit gums. The court also decides that the gold-wrapped chocolate bear would not constitute an unfair imitation of the "GOLDBÄREN" fruit gums. Haribo proceeded against Lindt's chocolate teddy wrapped in gold foil with a red ribbon around its neck that was introduced to the market in 2011 as an alternative to Lindt's well-known "Golden Bunny". Goldbears Haribo considered this golden bear an infringement of its rights to the "GOLDBÄREN" ("Gold Bears") word mark as well as an unfair imitation of its product (Haribo also uses a picture of a golden bear with a red ribbon on the packaging of the "GOLDBÄREN" fruit gum). They obtained a cease and desist order before the District Court of Cologne (LG Köln, 20th December 2012, case ref.: 33 O 803/11).  In 2014, the Higher Regional Court of Cologne lifted the decision on appeal (OLG Köln, 11th April 2014, case ref.: 6 U 230/12) and the Federal Supreme Court was called upon for a final judgment. The court finds that, while Haribo's word marks are well known in Germany, there is no likelihood of confusion between the three dimensional shape of Lindt's Golden Teddy and the "GOLDBÄREN" word mark. According to the judges, similarities between three dimensional shapes and word marks could solely result from conceptual similarities. The shape of the product that is marketed under the  word mark, in this case the shape of HARIBO's gummy bears, must be disregarded. Furthermore, a conceptual similarity between a word mark and a three-dimensional product shape would require that the word mark is the sole and obvious choice for the relevant public to refer to the three-dimensional shape. Conversely, It would not be sufficient if the word mark were merely one of several options to designate the product shape. The judges find that this was the case here. They present several other options to designate Lindt's product besides "Goldbär" ("golden bear"), such as golden teddy, chocolate bear, or chocolate teddy. The judges explain that the test must be strict in order to prevent right owners from monopolizing product shapes by obtaining word mark protection and thus detouring around the stricter requirements for device marks and 3D product shape marks. Further, Haribo was barred under unfair competition law from invoking its word mark "Gold-Teddy", given that Haribo only registered that mark after it had obtained knowledge of Lindt's intention to market a chocolate teddy bear. Finally, the court also rejected Haribo's unfair competition claims on the basis that Lindt's chocolate bear shape and get-up is not sufficiently similar to Haribo's fruit gum shape. This decision is significant because it covers a rare, but relevant cross-section between different types of trademarks. Indirectly, the decision also sheds light on the scope of protection for three-dimensional marks. Right owners and trademark practitioners planning to register new trademarks can now better assess whether an older 3D-mark poses a risk to a new word mark application, and vice versa. The BGH's German language press release is available here.

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