Gold bear wars reloaded

Author: Birgit Clark (Venner Shipley LLP, London)

Higher Regional Court of Cologne (Oberlandesgericht Köln), Case ref: 6 U 230/12, 11 April 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu128, first published online: July 16, 2014

Disagreeing with the first instance court, the Higher Regional Court of Cologne held that sweetmaker Lindt's three-dimensional gold-foiled chocolate bears did not infringe Haribo's well-known GOLDBÄREN gummy bear (word) trade marks.

Legal context

In accordance with Article 5(2) 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’.


German confectioner Haribo had sold its multi-coloured gummy bears wrapped in gold-coloured packaging since the 1960s and owned various registered trade mark rights in these, inter alia, covering confectionery: 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. Haribo's competitor, Swiss confectioner Lindt, producer of the well-known chocolate Gold Bunnies, had made and sold gold-foil wrapped chocolate bears (the ‘Lindt Teddy’, 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, asking for information, damages and the destruction of Lindt's products. In essence, Haribo argued that Lindt's bears amounted to a three-dimensional representation of Haribo's gummy bear trade marks. Lindt denied infringement and argued that gold foil and red ribbon as used on its chocolate Lindt Teddies were the same as those used on its well-known Easter chocolate Gold Bunnies. Lindt also stressed 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.


The first instance court, the Regional Court of Cologne (Landgericht Köln, 33 O 803/11, 18 December 2012) agreed with Haribo and held that Lindt's three-dimensional gold-foiled chocolate bears amounted to an infringing ‘visual representation’ of Haribo's well-known GOLDBÄREN gummy bear word mark under Article 14(2) No 3 MarkenG. In view of the Landgericht, the appearance of the shape of Lindt's chocolate bears inevitably produced connotations with Haribo's bears.

Bearing in mind that 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 first instance judges emphasized that that there could be similarity between different ‘categories of trade marks’.

The Landgericht therefore 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) and according to which 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.

On Lindt's appeal to the Higher Regional Court of Cologne, the appeal judges agreed with Lindt and confirmed the lower court's view that—in theory—a word trade mark, such as ‘Goldbär’, could be infringed by a three dimensional shape, such as the defendant's chocolate teddy. However, the appeal court did not agree with the Landgericht's application of the Bundesgerichtshof's precedents in the Oldtimer and Zwilling/Zweibrüder cases on a potential similarity between different ‘categories of trade marks’. The appeal judges agreed with both parties that Lindt's teddy shape was a complex sign but did not believe that the allegedly infringed sign (here: Haribo's gold bear) was the obvious, unforced, self-contained and distinctive title and thus the closest and most fitting description of the Lindt teddy shape. The judges explained that there were several additional levels of abstraction that separated the chocolate teddy shape from the Goldbär word mark.

Further, the overall impression conveyed by Lindt's teddy was not only based on its shape and gold colour wrapping, red ribbon and the imprint of ears, face and paws but also affected by the fact that Lindt's name and logo and the words ‘Lindt Teddy’ were prominently displayed on the teddy's stomach. In this context the court also referred to the Higher Regional Court of Frankfurt's precedent in the Gold Bunnies dispute cases between Lindt and its competitor Riegelein (GRUR-RR 2012, 255), in which the Frankfurt court had found that that the shape and colour of the Gold Bunnies were of a lower level of distinctiveness than the respective word elements (‘Lindt’ versus ‘Riegelein’) displayed on the bunnies. Applying this guidance to the case at hand, the Cologne judges concluded that that consumers would regard the word element ‘Lindt-Teddy’ in particular as an indication of origin, bearing in mind that the ‘Lindt-Teddy’ was a seamless addition to Lindt's established Gold Bunny product line. The court thus disagreed with Haribo's view that Lindt had taken unfair advantage of Haribo's Goldbär by ‘approximating’ its Lindt teddy to Haribo's gold bears in order to exploit the expectations of quality that consumers associate with Haribo's bears. The judges further explained this by pointing out that Lindt was a well-known confectionery manufacturer and the allegedly infringing Lindt Teddy product an obvious addition to Lindt's product line of gold-foiled chocolate shapes.

Practical significance

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) may equally be applied to conflicts between word marks and three-dimensional shapes is a crucial one, bearing in mind the impact this can have on search strategies and advice when it comes to clearing any category of (shape) trade mark (or designs) for use and registration in Germany. In its closing remarks the Higher Regional Court of Cologne stated that the question of such a ‘cross collision’ (Überkreuzkollision) of trade marks was indeed of a ‘fundamental nature’. It is now expected that Haribo will appeal the matter to the Bundesgerichtshof, which may in turn even refer the question to the Court of Justice of the European Union for pan-European guidance.

August and beyond

It's still July, but both the electronic version of the August 2014 issue of JIPLP and the printed version are now out. The online edition has been available in full since 15 July (see blogpost with full contents list here), though most of its content was first available for access by subscribers well ahead of that date.

If you want to check out the list of articles, reviews and current intelligence notes that are currently available online only, since the printed version of the issue in which they are to be included has yet to be printed and despatched, just click here.

Sri Lankan Court of Appeal balances tobacco trade mark rights and the promotion of public health

Author: Althaf Marsoof (King's College London, London, UK)

Ceylon Tobacco Company PLC v Hon Maithripala Sirisena, Minister of Health and others, CA 336/2012 (Writ), Court of Appeal, Sri Lanka, 12 May 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu131, first published online: July 16, 2014

The Sri Lankan Court of Appeal refused an application made by the Ceylon Tobacco Company PLC seeking to quash the Tobacco Products (Labelling and Packaging) Regulation No 1 of 2012 (published in Gazette Extraordinary No 1770/15 of 8 August 2012) subsequently amended by regulation published in Gazette Extraordinary No. 1797/22 of 15 February 2013 (‘regulations’) for being ultra vires its empowering statute, the National Authority on Tobacco and Alcohol Act 2006. The court came to its finding having considered the impact pictorial health warnings have on the use of tobacco, the nature of trade mark rights guaranteed under the Intellectual Property Act 2003 and the Sri Lankan government's interest of promoting public health, especially in view of its obligations under the World Health Organization Framework Convention on Tobacco Control.

Legal context and facts

The Sri Lankan government, through its Ministry of Health and in pursuance of its obligation under the World Health Organization (WHO) Framework Convention on Tobacco Control (FCTC), promulgated these regulations in terms of s 30 read with s 34 of the National Authority on Tobacco and Alcohol Act 2006 (NATA Act), which empowered the Minister of Health to make regulations that prescribed the nature and dimensions of health warnings to be displayed on every tobacco pack. The regulations, inter alia, introduced the following mandatory labelling and packaging requirements in relation to tobacco products:
Substance of regulation Reg. 4 No manufacturer, importer, retailer, storekeeper, agent or seller of any cigarette packet, package or carton containing cigarettes shall produce, supply, distribute, sell or offer for sale any such packet, package or carton unless every packet, package or carton containing cigarettes which is distributed, sold or offered for sale carries the specified health warnings as depicted in the Schedule to these regulations.

Reg. 5 The pictorial health warnings as is specified in the Schedule to these regulations shall be printed on the top surface area of both front and back sides of every cigarette packet, package or carton containing cigarette and shall cover an area not less than eighty per centum (80%) of the total area of the packet, package or carton.
The Ceylon Tobacco Company PLC (CTC) challenged the legality of these regulations, seeking to have them quashed by way of a writ of certiorari, on the basis that they were, inter alia, unreasonable and disproportionate, ultra vires the minister's power to make regulations under s 30 read with s 34 of the NATA Act and illegally subverted the statutory right of the CTC to use its trade marks guaranteed under s 121(1) of the Intellectual Property Act 2003 (IP Act).


It was in this backdrop that the court had to balance the interests of CTC, including its trade mark rights, against the Sri Lankan government's interest of promoting public health.

Two arguments were advanced by CTC in challenging the legality of the regulations introducing pictorial health warnings. The first argument related specifically to the vires of the regulations. CTC argued that in the absence of any express reference to ‘pictorial’ health warnings in s 34(1) of the NATA Act, the minister was not empowered to make regulations prescribing pictorial health warnings—as his powers were limited only to deal with textual warnings.

In further strengthening this argument, CTC relied on the fact that the FCTC neither compels State parties to impose pictorial health warnings, nor requires the imposition of health warnings on 80 per cent of the display areas of tobacco packs, the minimum being 30 per cent and the recommended being 50 per cent or more (Article 11:1 FCTC). It was on this basis that CTC claimed that the imposition of pictorial health warnings covering a surface of 80 per cent of tobacco packs was not only unreasonable and disproportionate, but also ultra vires the minister's powers under the NATA Act. In this regard, having considered literature from varying jurisdictions on the effectiveness of pictorial health warnings on the use of tobacco, the court concluded that the term ‘health warning’ should not be narrowly interpreted since a warning in today's context and society could be expressed by means of both text and pictures. The court was certain that it could never have been the intention of Parliament to exclude pictorial health warnings since such warnings could reach all categories of persons including those who may be illiterate. Accordingly, the implementation of pictorial health warnings in terms of these regulations was lawful and within the scope of the NATA Act and the powers of the minister.

The second argument advanced by CTC was that permitting pictorial health warnings to be displayed on 80 per cent of the display area of tobacco packs interfered with the tobacco company's right to use its trade marks effectively—which it argued was guaranteed under s 121(1) of the IP Act. Going beyond its minimum obligations under the Agreement on the Trade Related aspects of Intellectual Property Rights (TRIPS), which requires contracting States to confer on trade mark owners a negative right to exclude the unauthorized use of their trade marks (Article 16:1, TRIPS), the Sri Lankan government expressly guarantees anyone having a registered trade mark in Sri Lanka a positive right to use it in trade. The court acknowledged this positive right to use a trade mark, referring to an earlier decision of the Sri Lankan Court of Appeal in Leelananda v Earnest de Silva [1990] 2 Sri LR 237, where Sarath N Silva J (who later became a Chief Justice of Sri Lanka) interpreting the provisions of the former Code of Intellectual Property 1979 (that resembled s 121 of the IPAct), observed:
[T]he rights of a registered owner are both positive and negative in nature. The rights operate in a positive way and entitle the owner to use the mark or to assign or transmit the registration of the mark or to conclude licence contracts in relation to it … The negative aspects of the rights … preclude third parties from doing certain acts in relation to a registered mark. In my view both the positive and negative aspects referred above form integral parts of the rights of a registered owner of a mark.
Most importantly, the court concluded that any limitations on the rights of a trade mark owner (as prescribed in s 122 of the IP Act) apply only to the negative aspect of the right, whereas the positive right to use a trade mark does not succumb to any such restriction. In the circumstances, the court concluded:
Where 80% of the pack is covered with the health warning, the practical issue that arises is whether the remaining 20% is reasonably sufficient to present and exhibit the mark or in other words to use the mark … 20% of the space is not reasonably sufficient to present and exhibit a trade mark … .
The court added that the core function of a trade mark is to enable consumers to identify goods they desire without being misled as to their source and quality. By depriving tobacco trade mark owners of a reasonable opportunity to realize the function of a trade mark, ‘… unscrupulous traders may even misuse [that] situation to mislead … consumers by selling products from wrong sources rather than selling what actually the consumer wants to buy.’

Accordingly, although CTC's application was dismissed, the regulations were adjusted such that now only 50–60 per cent of the display surface of tobacco packs is subject to pictorial health warnings, leaving at least 40 per cent of space for the display of trade marks.

Practical significance

The gruelling duel between tobacco trade mark owners and health conscious governments is far from over, and has led to stringent legislative measures being taken in some jurisdictions. The recent enactment of the Tobacco Plain Packaging Act 2011 (Cth) (‘TPP Act’) in Australia that has completely abolished the use of trade marks on consumer tobacco packs serves as a fitting example, although the TRIPS compliance of this law is currently being challenged before the World Trade Organization (WTO).

What is noteworthy, however, is that, just as in Sri Lanka, the Australian Trade Marks Act 1995 (Cth) guarantees all trade mark owners a right to use their marks (s 20(1)). Yet when the Australian High Court was called upon to determine the constitutional validity of the TPP Act, the justices (except Haydon J who dissented) answered in the negative, or avoided answering at all, the question whether a right to use a trade mark exists (JTI v Commonwealth, [2012] HCA 43, paras 43, 77, 248 and 348). In contrast, the Sri Lankan Court of Appeal not only endorsed the existence of a positive right to use a trade mark under Sri Lankan law, but also concluded that if the display of tobacco trade marks was limited to just 20 per cent of the display area of tobacco packs that would be an unreasonable restriction on that right to use. This approach of the Court of Appeal in drawing a balance between the rights of tobacco trade mark owners and the government's interest in promoting public health is no doubt sound and is in fact consistent with the spirit of TRIPS.

However, the Court of Appeal's conclusion that the limitations on trade mark rights under the IP Act only apply to the negative right of exclusion conferred on trade mark owners, ought not to be taken as implying that the positive trade mark right of use is somehow absolute or unqualified. In order to arrive at its final decision, the Court of Appeal did not have to come to such a conclusion on a trade mark owner's right to use a trade mark, especially because all that TRIPS requires its contracting States to guarantee is the negative trade mark right of exclusion. In any event, the Court of Appeal's conclusion is not without problems in the Sri Lankan context, since a citizen's fundamental right to engage in a lawful trade guaranteed by the Sri Lankan Constitution (Art. 14(1)(g)) is subject to restrictions as may be prescribed by law in the interest of inter alia public health (Art 15(7)). If the use of trade marks is necessary to fully realise the fundamental right to engage in trade, then any positive right to use a trade mark must be subject to this constitutional limitation. The Supreme Court of Sri Lanka now has the opportunity of providing guidance on the nature and scope of trade mark rights, in particular as regards the positive right of use, in view of CTC's appeal to the land's highest court from the judgement of the Court of Appeal (S.C. Spl. L.A. No. 85/2014 dated 23.5.2014). Unless such guidance is provided, there could be implications in the event the Sri Lankan Government wishes to introduce more stringent tobacco packaging legislation, such as plain packaging.

The JIPLP Readers and Writers Group

JIPLP's LinkedIn Readers and Writers Group is an increasingly useful resource for opening discussions, exchanging views and even identifying authors and peer reviewers for the journal's articles. The group now has 246 members and continues to grow. The LinkedIn Group can be visited via this link.

During the past few weeks, an increasing number of attempts have been made to post to the Group, the aims of which are clearly stated as follows
This group is a forum for the exchange of ideas by contributors, readers and subscribers to the Journal of Intellectual Property Law & Practice (JIPLP), published by Oxford University Press
The Group is not a news service; nor is it a convenient dumping ground for law firm newsletters, commercial advertisements or solicitations of business. Any post to the Group that is not related to JIPLP, in terms of its range and quality of content, ease of access, functionality of website and so on will be deleted.

Please respect the integrity of this Group. There are plenty of other avenues for spreading news and for commercial marketing.  Thanks!

Luxembourg, we have a problem: where have the Advocates General gone?

Here's the August 2014 JIPLP editorial, "Luxembourg, we have a problem: where have the Advocates General gone?", penned by Deputy Editor Eleonora Rosati (e-LAWnora)
What is the story with the Court of Justice of the European Union (CJEU), its references for a preliminary ruling, and what looks like a sentiment of increasing uneasiness of the court towards its Advocates General, at least in the area of copyright?

Over the past few months the CJEU has ruled on key copyright issues, that spanned from the scope of exclusive rights (Case C-466/12 Nils Svensson and Others v Retriever Sverige AB, 13 February 2014; Case C-351/12 Ochranný svaz autorský pro práva k dílům hudebním os (OSA) v Léčebné lázně Mariánské Lázně as, 27 February 2014) and related exceptions and limitations (Case C-435/12 ACI Adam BV and Others v Stichting de Thuiskopie and Stichting Onderhandelingen Thuiskopie vergoeding, 10 April 2014; Case C-360/13 Public Relations Consultants Association Ltd v Newspaper Licensing Agency Ltd and Others, 5 June 2014) to enforcement (Case C-170/12 Peter Pinckney v KDG Mediatech AG, 3 October 2013; Case C-387/12 Hi Hotel HCF SARL v Uwe Spoering, 3 April 2014; Case C-314/12 UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH and Wega Filmproducktionsgesellschaft mbH, 27 March 2014), and everything in between, including the evergreen (because still highly unclear) database right (Case C-202/12 Innoweb BV v Wegener ICT Media BV and Wegener Mediaventions BV, 19 December 2013).

What most of these cases had in common was the role or, more appropriately, the absence thereof, of any input from the Advocate General. The CJEU either departed significantly from their Opinions or ruled without seeking one in the first place. The former is possible because Opinions of Advocates General are not binding on the CJEU. The court made this eloquently clear in recent references that required consideration of controversial issues, such as the criteria for determining jurisdiction in case of alleged online infringements (Pinckney) or the requirements of blocking injunctions (UPC Telekabel). The latter is expressly allowed by Article 20 of the court's Statute in those instances that raise “no new point of law”. This was the case, for instance, of Svensson, Public Relations Consultants Association, Hi Hotel, and Innoweb. In general terms, the CJEU has increasingly reverted to this possibility, as the 2013 Annual CJEU Report made clear together with the fact that in that year the number of references for a preliminary ruling was 33% higher than 2009.

By not seeking the Opinion of an Advocate General, the CJEU implied that there was no need for a detailed analysis of the legal aspects of the case at hand. By departing from the Opinion sought, the CJEU showed that it did not share the legal analysis conducted by the designated Advocate General. Either way, the CJEU appeared to suggest that it knew better than its Advocates General.

What appears like an emerging trend may thus prompt a specific question: Have Advocates General and their Opinions become a waste of time and resources in this area of the law?

It is unlikely that this was because copyright is an “easy” area of the law or the issues it has been presenting recently do not require much thought. Was it straightforward to say that hyperlinking falls outside the scope of copyright protection tout court? Was it easy to determine that the courts of a given Member State have jurisdiction to hear cases of alleged online copyright infringements just because the website where allegedly infringing content is available can be accessed from that particular territory? Was it so clear that the database right might come into question when operating a meta search engine?

One may wonder whether all this, instead, may be a consequence of the fact that, similarly to the judges of the court, Advocates General are not IP and copyright specialists. Would the statistics on Advocates General and their Opinions change at all if there were (more) subject specialists among them and – possibly – among the judges of the court too? What if, elaborating upon Article 252 of the Treaty on the Functioning of the European Union, the duty of Advocates General, acting with complete impartiality and independence, was to make, in open court, reasoned submissions on cases which, in accordance with the Statute of the court, require not just their involvement, but also their specific competence?

Opinions of Advocates General are usually more thoughtful than subsequent judgments, especially where the court agrees with the Opinion. But when it comes to copyright, what is and – most importantly – what should be the role of Advocates General? Is #saveourAGs the answer (and relevant hashtag of course)? If so, how can this be done?

August 2014 issue now published online

The August 2014 issue of the Journal of Intellectual Property Law & Practice is now available in full online, for the convenience of subscribers to the e-version who can access it immediately via the JIPLP website, here. Non-subscribers can gain limited-time access to individual articles from the JIPLP website on payment of the relevant fee.  The contents of the August 2014 issue are listed below.

This month's editorial, by Deputy Editor Eleonora Rosati, will be published in full on this weblog tomorrow.


Current Intelligence


From GRUR Int.

IP in Review