D Young & Co LLP - Germany
IP practitioners around the world have been following the many legal questions around Easter bunnies – ranging from the manifold aspects of 3D trademark protection and enforcement to the latest dispute over an alleged monopoly for the colour gold in relation to Lindt chocolate bunnies (the latter currently pending before the German Federal Supreme Court).
With Easter around the corner, we take a closer look at how the unconventional background of the Easter bunny has led to the latest chapter in the gold bunny saga.
The origins of the Easter bunny
While the exact origins of the Easter bunny are generally unknown, there may be some German connection. In a custom first mentioned in 1682, each Easter the imaginary rabbit lays and decorates eggs, before hiding them with sweets in the garden for children to find. Thus, the Easter Bunny has a similar role to Santa Claus, as both characters judge whether children have behaved well or not.
IP protection for Lindt’s gold bunny
Numerous trademark offices around the globe have denied protection for Lindt’s 3D trademark for a sitting chocolate bunny in Class 30.
In 2012 the Court of Justice of the European Union decided that a trademark for the shape and get-up of the gold bunny lacked distinctiveness (Case C-98/11P). As a result, after eight years, Lindt lost its infringement proceedings against Riegelein’s similar gold-coloured Easter bunny (Court of Appeal of Frankfurt, 27 October 2011, Case 6 U 10/03).
In 2017 Lindt argued that the gold bunny shape enjoyed acquired distinctiveness and was able to show a significant market share and high recognition of the mark in the relevant market in 10 countries. However, the EUIPO Grand Board of Appeal considered this insufficient to assume acquired distinctiveness given that the gold bunny is only a seasonal product within a huge market for chocolate (7 July 2017, Case R 2450/2011-6). In addition, the EUIPO ruled that the shape or another characteristic of a typical Easter bunny would give substantial value to a chocolate product. Therefore, Lindt’s application could not enjoy trademark protection.
In 2020 the Regional Court of Munich found that Lindt does not own unregistered trademark rights in Germany for the colour gold in relation to chocolate bunnies (Case 29 U 6389/19). The court stated that it does not establish a colour's market recognition for a product (eg, a chocolate bunny) as a whole if the attribution of the colour to a company is based solely on the extraordinary reputation of a specific product (eg, the Lindt gold bunny).
The case has been appealed to the German Federal Supreme Court, which has to consider when market recognition that only applies to a single product known to the public and with regard to further design features is to be assumed in the case of abstract colour marks.
It is worth noting that the gold bunny does not enjoy design protection, even though it was first launched in Germany in 1952 and has been available in Australia since 1997 and in Latin America since 2002.
Other Easter-related trademarks
Much like Christmas, Halloween or Thanksgiving, the term ‘Easter’ or its German translation ‘Ostern’ cannot be monopolised as a trademark for food and alcoholic beverages. This was confirmed by the German Federal Patent Court in a dispute over HALLOWEEN back in 2005 (Case 28 W(pat) 193/04).
Nevertheless, a look in EU trademark registers reveals a number of Easter-related marks, including the following German marks:
- OSTER (for spirits);
- OSTER PREMIUM (for wines);
- OSTER (for alcoholic beverages);
- OSTERHASI (meaning ‘little Easter bunny’, for alcoholic beverages);
- OSTER-FREUNDE (‘Easter friends’, for chocolate, biscuits and ice cream, among other things);
- LUSTIGE OSTEREISUCHE (‘funny Easter egg hunt’, in Class 30);
- LUSTIGE OSTERBANDE (‘funny Easter gang’, in Class 30);
- OSTERKÜKEN (‘Easter chicken’, in Class 30);
- OSTERZAUBER (‘Easter magic’, in Class 30); and
- OFFIZIELLER PARTNER DES OSTERHASEN (‘official partner of the Easter Bunny’, in Class 30).
Fun fact – patent protection for the Easter bunny’s skills
Finally, last year the German Patent and Trademark Office explained to bemused observers why the Easter bunny is able to lay eggs. For interested readers, a collection of related patents can be found here.