Federal Supreme Court substantiates relation between word marks and 3D marks

On September 23 2015 the German Federal Supreme Court decided on a dispute between Swiss chocolatier Lindt and German sweets manufacturer Haribo (Case reference I ZR 105/14). The court denied that there was a likelihood of confusion between Lindt’s golden chocolate bear and the word mark GOLDBÄREN ('gold bears'), which protects Haribo’s well-known and widely loved fruit gums. The court also decided that the gold-wrapped chocolate bear did not constitute an unfair imitation of the GOLDBÄREN fruit gums.

Haribo filed suit against Lindt’s chocolate bear wrapped in gold foil with a red ribbon around its neck (depicted below on the left), which was introduced to the market in 2011 as an alternative to Lindt’s well-known 'Golden Bunny'.

Haribo considered that the golden bear infringed its rights to the word mark GOLDBÄREN, and constituted an unfair imitation of its product (Haribo also uses a picture of a golden bear with a red ribbon - depicted above on the right - on the packaging of the GOLDBÄREN fruit gum). Haribo obtained a cease and desist order before the District Court of Cologne (LG Köln, Case reference 33 O 803/11, December 20 2012). In 2014 the Higher Regional Court of Cologne lifted the decision on appeal (OLG Köln, Case reference 6 U 230/12, April 11 2014) and the Federal Supreme Court was called upon for a final judgment.

The court found that, while Haribo’s word marks are well known in Germany, there was no likelihood of confusion between the three-dimensional (3D) shape of Lindt’s golden chocolate bear and the word mark GOLDBÄREN. According to the judges, similarities between 3D shapes and word marks could result solely from conceptual similarities. The shape of the product that is marketed under the word mark - in this case the shape of Haribo's gummy bears - must be disregarded. Furthermore, a conceptual similarity between a word mark and a 3D product shape would require that the word mark is the sole and obvious choice for the relevant public to refer to the 3D shape. Conversely, it would not be sufficient for the word mark to be merely one of several options to designate the product shape. The judges found that this was the case here; they presented several other options to designate Lindt’s product besides 'Goldbär' (“golden bear”), such as 'golden teddy', 'chocolate bear' or 'chocolate teddy'.

The judges explained that the test must be strict in order to prevent rights owners from monopolising product shapes by obtaining word mark protection and thus getting around the stricter requirements for device marks and 3D product shape marks. Further, Haribo was barred under unfair competition law from invoking its word mark GOLD-TEDDY, given that Haribo registered that mark only after it had obtained knowledge of Lindt’s intention to market a chocolate teddy bear. Finally, the court also rejected Haribo’s unfair competition claims on the basis that the shape and get-up of Lindt’s chocolate bear was not sufficiently similar to the shape of Haribo’s fruit gum.

This decision is significant because it covers a rare, but relevant, cross-section between different types of trademarks. The decision also indirectly sheds light on the scope of protection for 3D marks. Rights owners and trademark practitioners planning to register new trademarks can now better assess whether an older 3D mark poses a risk to a new word mark application, and vice versa.

The court's German-language press release is available here.

Philipp Lehmann and Anthonia Ghalamkarizadeh, Hogan Lovells, Hamburg