Court considers likelihood of confusion between 3D product and word mark

In Haribo GmbH v Lindt Spruengli AG (Case 33 O 803/11, December 18 2012), the Regional Court of Cologne has found that Lindt's gold-foil wrapped chocolate bear infringed Haribo's German word mark GOLDBÄREN ('gold bears').

Swiss chocolate manufacturer Lindt has put on the market not only its famous gold-foil wrapped chocolate bunny (which is the subject of several judicial disputes), but also a chocolate bear wrapped in gold foil that wears a red ribbon around its neck. Lindt itself never branded its chocolate bear under the names 'Goldbär' ('gold bear') or 'Goldteddy' ('gold teddy'). However, due to the visual appearance of Lindt's product, 'Goldbär' - and not names such as 'gold-coloured chocolate teddy bear', 'golden bear figure' or 'gold-foiled bear' - is the obvious denomination that consumers will use to name Lindt's chocolate bear. This was the argument of German confectionery producer Haribo, and the court agreed.

The court found that there was a violation of Haribo's word mark GOLDBÄREN. The three-dimensional shape of Lindt's golden chocolate bear with the red ribbon around its neck would dilute Haribo's GOLDBÄREN mark and lead consumers to think of Haribo's product - in particular, the court took into consideration that:

• Haribo's 'Goldbär', which is used on the packaging of the gummi bears, among other places, also has a red ribbon around its neck; and
• Lindt's chocolate bear is more or less the same shape as Haribo's 'Goldbären' gummi bears.

The court noted that consumers have known the trademark GOLDBÄREN for gummi bears for years. GOLDBÄREN is a trademark with a high reputation. Consumers will see Lindt's chocolate products and Haribo's sweets side by side and wrongly assume that there is a connection between them. The court also pointed out that there are more and more cooperations between different confectionery and chocolate producers.

It seems to be the first time that a German court has ruled on this issue - namely, whether a three-dimensional product design might infringe a word mark. The court referred to case law finding a similarity between different categories of trademarks - in particular, between a word mark and a device-only mark where the latter reflects the meaning of the word and where the word mark is the obvious denomination that consumers will use to name the picture contained in the device mark.

It is merely a matter of time before the Federal Supreme Court also rules on this issue. Lindt is allowed to lodge an appeal with the Higher Regional Court of Cologne and will most likely do so. It is likely that the Higher Regional Court of Cologne will then allow the appeal to the Federal Supreme Court.

Tanja Hogh Holub, Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Munich