With judgment of July 29, 2021 (file number I ZR 139/20) the German Supreme Court decided that the gold tone of the „Lindt gold bunny“ enjoys trademark protection in Germany.
The decision has a long history. For several years now, the Swiss company Lindt, a manufacturer of high-quality chocolate, has been vigorously trying to obtain trademark protection for its chocolate Easter bunny which is packed in a golden foil. In 2004, Lindt filed an EU trademark application seeking protection for the shape of a chocolate bunny wrapped in a gold foil with a red ribbon and a small bell. However, this first attempt to obtain protection failed, all instances on EU level denied protection. Finally, in 2012 the European Court of Justice ruled that the three essential elements of the application lack distinctiveness since the characteristics of these three elements were not sufficiently different from those of the basic shapes commonly used for chocolate and chocolate products, especially chocolate bunnies.
Against this background Lindt changed its strategy and focused on protection as an unregistered color mark. Lindt argued that the gold tone of the packaging foil of its chocolate easter bunnies is well known to German customers through years of intensive use and that this gold color is generally associated with its chocolate easter bunny. The chocolate bunny with the respective gold tone has been sold in Germany since 1993 and the market share was more than 40% in Germany in 2017. Lindt claimed an unregistered color trademark acquired by use (§ 4 No. 2 German Trademark Act). In general, under German trademark law it is possible to acquire trademark rights in unregistered trademarks if a sign has been used in commerce as a trademark for the relevant goods and services and has acquired a reputation among the relevant public. Lindt provided a survey proving that over 70% of German customers know the golden chocolate bunny and assign the color used to the company Lindt.
The German Supreme Court ruled in favour of Lindt
The Regional Court of Munich as first instance followed the argumentation of Lindt and recognized an unregistered color trademark. However, the Higher Regional Court of Munich rejected protection and dismissed the infringement action of Lindt. The court acknowledged that color trademarks can also be established by use of the mark if it has gained recognition in the market, however, it refused recognition in the case at dispute. Unlike in previous cases of color marks Lindt did not use the color as a corporate color for various products, but only for a specific product, namely the chocolate bunny. In such a case a consumer would not assign the color with the company Lindt.
The German Supreme Court objected to this reasoning as being false. The survey submitted by Lindt proves that 70% of the consumers allocate the golden tone of the Lindt chocolate bunny and this clearly exceeds the required threshold of 50%. The acquisition of reputation among the relevant public does not require that the color is used as the „corporate color“ for all or many of the company’s products. Nor does it matter whether the gold tone is used for chocolate bunnies other than the well-known Lindt gold bunny (seated bunny, red collar with a golden bell, painting and the inscription „Lindt GOLD BUNNY“), the public would consider it as an indication of origin, even if it is used together with further design elements.
This is a great success for Lindt. It also makes clear to all other trademark owners that a color trademark does not require that a specific color has to be used for a large number of products or even as a corporate color.
For Lindt it will not be the last chapter in this story because the Higher Regional Court of Munich now has to examine whether the defendant violated the Lindt’s color mark by selling their chocolate bunnies wrapped in gold-colored foil. This upcoming decision will be interesting as well, because the defendant’s chocolate bunny looks significantly different with regard to the rest of the design elements, especially the shape. It can be assumed that this decision will also go to the German Supreme Court.
