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Year of issue: 2021
Publication date: 07/29/2021
No. 147/2021
Judgment of July 29, 2021 - I ZR 139/20
Facts of the case:
The plaintiffs are companies of the Lindt & Sprüngli group, which produces high-quality chocolate. One of the plaintiffs' products is the "Lindt-Goldhase" (Lindt Gold Bunny), which has been offered in Germany in golden foil since 1952 and in the current shade of gold since 1994. The plaintiffs have sold more than 500 million Gold Bunnies in Germany over the past 30 years. The "Lindt-Goldhase" (Lindt Gold Bunny) is by far the best-selling chocolate Easter bunny in Germany. Its market share in Germany was over 40% in 2017. According to a survey submitted by the plaintiffs, 70% of the respondents attribute the golden hue used for the foil of the "Lindt-Goldhase" (Lindt Gold Bunny) in connection with chocolate bunnies to the plaintiffs' company.
The defendant is also a manufacturer of chocolate products. It likewise marketed a sitting chocolate bunny in a gold-colored foil during the 2018 Easter season.
The plaintiffs are of the opinion that they are the owners of a use mark on the gold shade of the "Lindt-Goldhase" (Lindt Gold Bunny). The defendant allegedly infringed this trademark by selling its chocolate bunnies. The plaintiffs are suing the defendant for injunctive relief against the marketing of its chocolate bunnies. They are also demanding that the defendant provide information and seeking a declaration that it is liable for damages.
Course of proceedings to date:
The Higher Regional Court dismissed the action. It held that the action was unfounded because the plaintiffs were not the owners of a use mark pursuant to Section 4 No. 2 MarkenG (German trademark law) for the golden hue of the "Lindt-Goldhase" (Lindt Gold Bunny). The color shade had not acquired a reputation for the product chocolate bunnies.
Decision of the Federal Court of Justice:
The Federal Court of Justice allowed the plaintiffs' appeal and referred the case back to the Court of Appeal for a new hearing and decision.
The plaintiffs have proven that the golden hue of the Lindt Gold Bunny has acquired a reputation as a trademark for chocolate bunnies within the relevant public within the meaning of Section 4 No. 2 MarkenG (German trademark law). According to the traffic survey submitted, the degree of association of the golden hue used for the foil of the "Lindt-Goldhase" (Lindt Gold Bunny) in connection with chocolate bunnies with the plaintiffs' company is 70% and thus clearly exceeds the required threshold of 50%. The acquisition of reputation does not require that the color mark is used as a "house color" for all or numerous products of the company. Nor does it matter whether the public would see this as an indication of origin for the plaintiffs if the shade of gold were used for chocolate bunnies other than the well-known Lindt Gold Bunny. This is a question of the likelihood of confusion, which only arises in the context of the examination of an infringement of the color mark. Finally, the fact that the gold tone is used together with design elements of the "Lindt Gold Bunny" (Lindt Gold Bunny) which are also known to the public (sitting bunny, red collar with golden bell, painting and inscription "Lindt GOLDHASE") does not argue against a reputation of the gold tone. It is decisive that the target public sees an indication of origin in a use of this gold tone for chocolate bunnies even if it is used together with these other design elements.
In the reopened appeal proceedings, the appeals court will have to examine whether the defendant infringed the plaintiffs' use mark on the gold tone of the "Lindt-Goldhase" (Lindt Gold Bunny) by marketing its chocolate bunnies packaged in gold-colored foil.
Previous instances:
LG Munich I - Judgment of October 15, 2019 - 33 O 13884/18.
Munich Higher Regional Court - Judgment of July 30, 2020 - 29 U 6389/19.
The relevant provision of Section 4 No. 2 MarkenG (German trademark law) reads:
Trademark protection arises from the use of a mark in the course of trade to the extent that the mark has acquired a reputation as a trademark within the public concerned.
Picture credits: Wirestock – AdobeStock.com (editorial use)
