Another chapter in the endless bunny hunt - The golden color of Lindt's chocolate bunny is unregistered German color mark

In its ruling of July 29, 2021 (case number I ZR 139/20), the German Federal Court of Justice ruled that the gold color of the “Lindt Gold Bunny” is protected as a trademark 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 seeking trademark protection for its chocolate Easter bunny, which is wrapped in gold foil. In 2004, Lindt filed an EU trademark application seeking protection for the shape of a chocolate bunny wrapped in gold foil with a red ribbon and a small bell. However, this first attempt to obtain protection failed; all instances at the EU level denied protection. Finally, in 2012, the European Court of Justice ruled that the three essential elements of the application lacked 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 backdrop, Lindt changed its strategy and focused on protecting the color as an unregistered color mark. Lindt argued that the gold hue of the packaging foil for its chocolate Easter bunnies is well known to German customers due to years of extensive 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 its market share in Germany exceeded 40% in 2017. Lindt claimed an unregistered color trademark acquired through use (Section 4(2) of the 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 recognize the golden chocolate bunny and associate the color used with the company Lindt.

The German Supreme Court ruled in favor of Lindt

The Munich Regional Court, as the court of first instance, accepted Lindt’s arguments and recognized an unregistered color trademark. However, the Munich Higher Regional Court denied protection and dismissed Lindt’s infringement claim. The court acknowledged that color trademarks can also be established through use of the mark if it has gained recognition in the market; however, it refused to grant recognition in the case at hand. Unlike in previous cases involving 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 associate the color with the Lindt company.
The German Supreme Court rejected this reasoning as flawed. The survey submitted by Lindt proves that 70% of consumers associate the golden hue with 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 be used as the “corporate color” for all or many of the company’s products. Nor does it matter whether the golden hue 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 still regard it as an indication of origin, even if it is used in conjunction with other design elements.

This is a major success for Lindt. It also makes it clear to all other trademark owners that a color trademark does not require that a specific color be used on a wide range of products or even as a corporate color.

For Lindt, this will not be the final chapter in this story, as the Higher Regional Court of Munich must now determine whether the defendant infringed on Lindt’s color trademark by selling chocolate bunnies wrapped in gold-colored foil. This upcoming ruling will also be of interest, as the defendant’s chocolate bunny differs significantly from Lindt’s in terms of other design elements, particularly its shape. It is likely that this case will also be appealed to the German Federal Court of Justice.