The 1st Civil Panel of the German Federal Court of Justice which is responsible for trademark and competition law among other matters, ruled that the distribution of Lindt’s seated chocolate bears wrapped in gold foil with a red ribbon neither infringes Haribo’s Gold-Bear trademark nor are they an illegal imitation of their fruit gum products.
The plaintiff produces and distributes fruit gum sweets. Some of its products are so called “gummy bears” which they denote with “Goldbären”. The company is the owner of the sugar confectionery wordmarks ″Goldbären“, ″Goldbär“ and ″Gold-Teddy”. The defendants distribute chocolate products: Among others, the “Lindt Gold Bunny” and since year 2011 also a seated chocolate bear wrapped in gold foil and with a red ribbon which they call “Lindt Teddy”.
The plaintiff demands from the defendants the omission of distribution of the chocolate bears wrapped in gold foil and claims information, the products’ destruction and compensation for damages. In its opinion, the attacked figures infringe its trademarks and plot an unfair imitation of its gummy bears.
In the Court of First Instance its claim succeeded. The Higher Regional Court modified the trial court’s verdict and dismissed the case. The Federal Court of Justice, however, basically dismissed the appeal against the appeal judgement.
The plaintiff’s claims for the infringement of its trademark rights according to § 14 paragraph 2 no. 2 and 3 German Trademark Act are nonexistent. Nevertheless, the plaintiff’s trademarks „Goldbär“ and ″Goldbären“ are well known in Germany and the opposing products of the parties share similarities. However, for the assumption of a likelihood of confusion or a mental combination, there is a lack of similarity of the plaintiff’s trademarks with respect to the infringed defendants’ product designs.
If a wordmark and a 3D product design are subject to a claim, as in this case, the degree of similarity cannot be estimated by a similarity in sound or sign but solely by a similarity of its value of meaning. Only the wordmark itself and the objected product form have to be compared. When estimating the degree of similarity, the product form for which the trademark is used, in this case the plaintiff’s gummy bears, is not to be involved. A similarity in the meaning requires that the wordmark, from the target customers’ view, corresponds to the natural, casual and applies entirely to the term used for the 3D design. Here, the assumption of the similarity has to be subject to strict demands since otherwise there is a risk that by the assumption of a similarity in the meaning of a wordmark with a 3D product form, an extensive monopolization of product design were to be the consequence which cannot be achieved by a picture or a 3D product form which defines a specific product form. A wordmark being one of several obvious terms of the product form is insufficient.
In the present case, there exists no similarity with respect to the meaning. For the denomination of Lindt’s products not only terms like “Goldbären” and “Goldbär” can be considered. Also, denominations like “Teddy”, “Chocolate Bear” or “Chocolate Teddy” are obvious. With respect to another figurative mark of the plaintiff, showing a standing bear, there is also a lack of similarity to the defendants’ chocolate figures wrapped in gold foil. The plaintiff cannot refer to the wordmark “Gold Teddy” as the assertion of this trademark would be an anti-competitive obstruction of the defendant within the meaning of § 4 no. 10 Fair Trade Law. Only after learning about the defendants’ intention of distribution, the plaintiff had the wordmark recorded in the trademark register.
The plaintiff’s claims regarding the Fair Trade Law also do not exist. The infringed product forms are no imitations of the plaintiff’s products within the meaning of § 4 no. 9 Fair Trade Law since there is no sufficient similarity present between the plaintiff’s gummy bears and the defendants’ chocolate figures.
Federal Court of Justice press office notice no. 161/2015; Federal Court of Justice verdict of September 23, 2015 – I ZR 105/14; Cologne Regional Court verdict of December 20, 2012 – 33 O 803/11; Cologne Higher Regional Court verdict of April 11, 2014 – 6 U 230/12