Gold Bear Wars

Author: Birgit Clark (Baker & McKenzie LLP)

Regional Court of Cologne (Landgericht Köln), 33O 803/11, 18 December 2012

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt072, first published online: May 31, 2013

Upholding a claim brought by confectionery manufacturer Haribo, the Regional Court of Cologne decided that competitor Lindt's three-dimensional gold-foiled chocolate bears amounted to an infringing ‘visual representation’ of Haribo's well-known GOLDBÄREN gummy bear word marks.

Legal context

In accordance with Article 5(1) of the European Union's Trade Mark Directive, Article 14(2) No 3 of the German Trade Mark Act (MarkenG) provides that it constitutes trade mark infringement ‘if a third party without having consent of the trade mark owner in the course of trade exploits the distinctive character or the repute of a well-known trade mark in relation to goods or services which are not similar to those for which the trade mark is registered without due cause and by such use takes unfair advantage of the distinctive character or the repute of the trade mark’.

Facts

German confectioners Haribo had sold its multi-coloured gummy bears wrapped in gold-coloured packaging since the 1960s and owned various registered trade mark rights relating to them including, inter alia, GOLDBÄR (in English: gold bear) and its plural form GOLDBÄREN as well as its ‘Goldbär device’: a yellow-gold coloured bear device wearing a red ribbon bow covering confectionery. Haribo's competitor, Swiss confectioner Lindt, who produces the well-known chocolate Gold Bunnies, has made and sold gold-foil wrapped chocolate bears (called Lindt Teddy and wearing a red ribbon bow) since 2011. Haribo took objection and brought a claim against the distribution of Lindt's chocolate bears in Germany based on its trade mark rights. In addition, Haribo asked for information, damages and the destruction of Lindt's products. Lindt saw things differently and contended that the gold foil and red ribbon used on its chocolate Lindt Teddies were the same as those used on its well-known Easter chocolate Gold Bunnies. Lindt explained that it had intentionally refrained from using brand names such as ‘Goldbär’ or ‘Gold Teddy’ and that gold was a traditional Christmas colour. The Swiss chocolate maker thus invited the court to find that the competing products did not look in any way similar so that consumers would not be confused.

Analysis

The court agreed with Haribo. While Haribo based its infringement claim on a likelihood of confusion (Article 14(2) No 2 MarkenG), dilution (Article 14(2) No 3 MarkenG) as well as unfair competition law, the court chose to focus solely on trade mark dilution.

The court confirmed that Haribo's trade mark registration for GOLDBÄREN amounted to a well-known mark in the sense of Article 14(2) No 3 MarkenG insofar as it covered fruit gum, being known to over 90 per cent of the relevant German consumers as evidenced by a market survey Haribo submitted in support of its claim. While it acknowledged that Lindt did not use the word sign GOLDBÄREN for its products, the court nonetheless found that Lindt's Teddies amounted to a ‘visual representation’ of and were thus of a ‘high similarity’ to Haribo's trade marks. The court explained that the sight of the shape of Lindt's three-dimensional chocolate bears inevitably produced connotations with Haribo's bears as being protected by its various trade mark registrations.

The court further agreed with Haribo that consumers were likely to refer to Lindt's bears as ‘Goldbären’ due to their visual appearance which could in turn result in a dilution of Haribo's trade mark rights under Article 14(2) No 3. MarkenG Lindt had claimed that its bear had been named the Lindt Teddy as an intentional variation of its well-known gold foil wrapped bunny. In this respect, the court took the view that the majority of consumers would not use terms such as ‘gold bear figure’, ‘bear wrapped in gold foil’ or ‘gold-coloured chocolate teddy bear’ but would pick the closest and most obvious term when describing Lindt's bears, which was ‘Goldbär’. While ‘Goldbär’ was not a term that could be found in a dictionary, it was nonetheless the most obvious term to describe Lindt's bears, not least due to the fame of Haribo's trade mark.

Noting the significance of the legal issues raised, the court allowed an appeal to the Higher Regional Court of Cologne, explaining that this was a special case since there had so far been no decision by the German Federal Court of Justice (Bundesgerichtshof) on the question of a conflict between a word mark and a three-dimensional product design. The Cologne court did, however, stress that there could be a similarity between different ‘categories of trade marks’ and applied legal principles which the Bundesgerichtshof had previously developed in precedents concerning a conflict between word marks and figurative trade marks (BGH GRUR 1971, 251, 252—Oldtimer; BGH GRUR 2004, 779, 783 Zwilling/Zweibrüder). The judges pointed out that the Bundesgerichtshof had held that there could be similarity where there was not only a ‘concordance in theme’ but where a term was the ‘obvious, unforced and exhaustive description’ adopted by consumers. To avoid a general protection of a mere theme (‘kein allgemeiner Motivschutz’) the threshold for trade mark infringement had to be set high and be restricted to signs that had a ‘particularly memorable and distinctive’ meaning. In cases of three-dimensional marks this would only apply in rare cases, the Cologne judges concluded. In this context the judges also agreed with Haribo that Lindt's gold-coloured packaging could lead consumers to make a mental connection since Haribo's packaging also featured a gold bear wearing a red ribbon.

Lindt's use of its Teddy was also use of the GOLDBÄREN trade mark insofar as it was used as an indicator of trade origin. The court pointed out that Lindt itself had argued that the Teddy was meant as a logical extension of the Gold Bunny product line and was thus meant to refer to the defendant's business.

Lindt's three-dimensional shape and packaging of its Teddy was also ‘unfair’ in the sense of Article 14(2) No 3 MarkenG since there was a serious and real danger that it could dilute the distinctive character of Haribo's mark. Not only would the strength of Haribo's mark as an indicator of origin be reduced, but there was a genuine risk that the mark GOLDBÄREN could become a generic term. The court did not accept the argument that the term GOLDBÄREN was purely descriptive for chocolate products and that their chocolate bears were high priced premium chocolate, whereas Haribo sold ‘low priced sweet nibbles in plastic bags’. Conceding that there may be other gold foil-wrapped chocolate bears available on the German market the judges nonetheless considered that consumers would not automatically describe these as ‘Goldbär’. Further, the relevant market could not be compartmentalized into a market for fruit gums and a market for chocolate since that there was a homogenous market for sweets. Indeed, both the defendant's and the claimant's products were sold in close proximity in supermarket shelves.

The imprint ‘A Teddy’ on some of Lindt's bear did not remove the serious and real danger of a dilution of Haribo's trade mark. Even if an observant consumer would notice the imprint, this would not remove the risk of an association of both marks in the mind of consumer, who could be led to believe that there were contractual connections between defendant and claimant or that Lindt's Teddy was a co-operation of two different manufacturers of confectionery, in particular since Haribo had recently introduced fruit gum products that were a cooperation with another chocolate maker. Accordingly, in light of the (potential) damage to Haribo's trade mark rights it was proportionate for Lindt to pay damages, recall and destroy all products as demanded by Haribo.

Practical significance

The question of conceptual similarity is not always straightforward, as this case illustrates. While it has long been acknowledged that word and figurative marks can be similar, the question of similarity between a word mark and a three-dimensional shape mark appears to arise less frequently. In order to maintain legal certainty for trade mark owners and their competitors alike, it seems crucial that there is a high threshold—as rightly demanded by the Cologne court—and clear guidance as to when similarity may arise.

It is not easy to determine whether the guidance developed by the Bundesgerichtshof for conflicts between word and device marks (similarity, where the later mark is an ‘obvious, unforced and exhaustive description’ of the earlier mark) should equally be applied to all conflicts between word marks and three-dimensional shapes or whether it should be limited to cases where the earlier mark is well-known—as it was the case here with Haribo's mark. Bearing in mind the impact this point may have on search strategies and advice when it comes to clearing any category of (shape) trade mark—and potentially also designs—for use and registration in Germany, it is good news that Lindt has already announced that it will appeal the decision. It thus appears safe to predict that it may only be a question of time until we have a Bundesgerichtshof decision on this issue.