Can a wordmark with a particular meaning be infringed by a
three-dimensional product design? Disputes regarding the
infringement of a wordmark by a purely figurative mark (and vice
versa) have been the object of several decisions by German courts
of appeals and the German Federal Supreme Court. However, in the
'gold bear' matter, the German Federal Supreme Court has
now had the opportunity for the first time to look at the alleged
infringement of wordmarks by a product design.
This litigation has been in the media for years. Consequently,
the decision by the Federal Supreme Court of 23 September 2015
(file no. I ZR 105/14) has been eagerly awaited. The surprisingly
'severe' decision is of significant importance and has
serious economic effects. The Court takes the view that it is
theoretically possible to find infringement of a wordmark by the
design of a product. However, in order to prevent an overly
extensive protection covering product shapes, the hurdle to find a
sufficient similarity of signs needs to be high, in the view of the
Facts of the matter: The object of the dispute
between Haribo and Lindt & Sprüngli was a golden chocolate
bear: 'A TEDDY', which was first sold on the German market
by the Swiss chocolate manufacturer before Christmas 2011. Haribo
is the owner of the German wordmarks which are the German terms for
'gold bears' 'gold bear', 'gold teddy', the
community trademark 'gold bear' and the German colourmark
gold for fruit gum (which was registered based on acquired
distinctiveness). It therefore took the view that its trademark
rights were infringed by the bear-shaped chocolate product.
While Haribo was successful at first instance in the Cologne
District Court, the Cologne Court of Appeals rejected the claims.
Haribo had no luck before the German Federal Supreme Court, either.
The judges of the first civil section largely rejected the further
The decision: In accordance with the view taken
by the lower courts, the German Federal Supreme Court also answered
the core question in the litigation affirmatively. It is
theoretically possible to infringe a wordmark with the design of a
product. However, while the District Court had found a "high
similarity of the signs" between the plaintiff's marks and
the Lindt gold bear, the Federal Supreme Court denied this
requirement and applied strict requirements.
In order to avoid an overly extensive protection of shapes, it
is necessary, according to the Federal Supreme Court, to find that
the wordmark is perceived by consumers as the obvious, unforced and
exhaustive description of the three-dimensional product shape. In
other words: even if there is just one alternative term which may
be used for the product, the trademark will not be infringed. In
the case at issue, the court said, 'gold bear' is not the
only possible term for the product. Consumers could also associate
the Lindt bear with other terms such as 'teddy',
'chocolate bear' or 'chocolate teddy'.
As mentioned at the outset, the Federal Supreme Court based its
strict requirements on the consideration that otherwise there could
be a danger that the alleged similarity of signs between the
meaning of a wordmark and a three-dimensional product shape could
lead to monopolising product shapes to a significant extent. This
is neither possible by obtaining figurative or three-dimensional
trademarks, nor is it desirable from a legal policy standpoint.
The German Federal Supreme Court also did not uphold any unfair
competition law claims of Haribo against the defendant.
Practical effects of the decision: The judgment
by the German Federal Supreme Court may have an impact on the
practice of trademark filings. In its decision, the Federal Supreme
Court confirmed that a three-dimensional product shape can violate
the scope of protection of a wordmark and thus lead to claims based
on infringement. Because of the high bar set regarding the
similarity of signs, however, such a claim is unlikely to be
successful in practice very often. The respective trademarks will
likely often lack the necessary distinctiveness because the meaning
of the terms will frequently be entirely descriptive. Clients
wanting to protect their product names in the best possible way are
therefore well advised to consider alternatives such as registered
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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