Sweet news from the Federal Supreme Court: decision in the Lindt gold bunny dispute
The Federal Court of Justice has ruled that the gold shade of the Lindt chocolate bunny has acquired trade mark protection by reputation, i.e. by mere use without registration.
In principle, colours can be registered as trade marks at the DPMA.
Well-known examples are the Telekom magenta, the ADAC yellow, the Beiersdorf Nivea blue or the Deutsche Post yellow.
However, the hurdles are high. This is because the required distinctive character under trade mark law is only present for colour marks under particularly exceptional circumstances, e.g. if only a very limited number of goods or services are registered for the trade mark or if the public is used to colours as a means of identification on a certain market.
If there is no original distinctive character, protectability can be acquired through use. However, this so-called penetration of the market is only sufficient if the target public is aware of the colour by more than 50%. A prerequisite in this respect is that the colour is therefore not merely understood by the public as a descriptive indication or design feature.
In the present chocolate Easter bunny case, the Swiss manufacturer proved that a majority of 70% of potential buyers associate the shade of gold with Lindt. The golden shade has thus acquired a reputation (even without trade mark registration) through mere use.
Nevertheless, it is still open whether the competitor sued, the Swabian confectioner Heilemann, has infringed Lindt’s existing trademark rights or may continue to sell its golden chocolate bunnies. The Federal Supreme Court has referred the case back to the Munich Higher Regional Court. The final decision remains to be seen.