Germany: Chocolate Bear Beats Gummy Bear

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 Court.

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 appeal.

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 design protection.

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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