BGH Decision on trademark protection of the gold tone of the Lindt gold chocolate bunny
Federal Supreme Court, Judgment of 29.07.2021
– I ZR 139/20 –
Gold tone of the Lindt Gold Bunny enjoys trade mark protection – Let’s have a look at this interesting BGH, German Federal Supreme Court.
The Federal Supreme Court has ruled that the gold tone of the “Lindt Gold Bunny” enjoys trademark protection. The Court of Appeal would now have to examine whether the defendant had infringed the plaintiffs’ use of the mark on the gold shade of the “Lindt Gold Bunny” by distributing their chocolate bunnies packaged in gold-coloured foil.
The plaintiffs are the Lindt & Sprüngli group of companies, which has been selling the “Lindt Gold Bunny” in golden foil in Germany since 1952 and in the current shade of gold since 1994. The “Lindt Gold Bunny” is by far the best-selling chocolate Easter bunny in Germany.
According to a traffic survey submitted by the plaintiffs, 70% of the respondents attribute the golden shade used for the foil of the “Lindt-Goldhase” to the plaintiffs’ company in connection with chocolate bunnies.
The defendant is also a manufacturer of chocolate products. It also marketed a chocolate bunny in a gold-coloured foil during the 2018 Easter season. The applicants are of the opinion that they are the proprietors of a trademark currently used and the gold shade of the “Lindt Gold Bunny” is also part of it. The defendant infringed this trademark by marketing its chocolate bunnies. The plaintiffs claim that the defendant should cease and desist from marketing their chocolate bunnies.
The Higher Regional Court dismissed the action. It stated that the action was unfounded because the plaintiffs were not the owners of a utilization mark pursuant to § 4 No. 2 MarkenG for the golden shade of the “Lindt Gold Bunny”. The colour had not acquired a reputation for the product chocolate bunnies. The Federal Court of Justice allowed the applicants’ appeal and referred the case back to the Court of Appeal for a new hearing and decision. The applicants proved that the golden color tone of the Lindt golden bunny had acquired a reputation as a trade mark for chocolate bunnies within the relevant public within the meaning of Section 4 No. 2 MarkenG. According to the public survey submitted, the degree of association of the golden tone used for the foil of the “Lindt Gold Bunny” in connection with chocolate bunnies with the applicants’ company is 70% and thus clearly exceeds the required threshold of 50%. Finally, the fact that the shade of gold is used together with design elements of the “Lindt Gold Bunny” that are also known to the public (sitting bunny, red collar with golden bell, painting and inscription “Lindt Goldhase”) are really important characteristics of the trademark. It is decisive that the target public sees an indication of origin in the use of this shade of gold for chocolate bunnies even if it is used together with these other design elements.