By their own admission, judges at the German Federal Court of Justice entered unchartered legal territory in trademark law when issuing the decision in favor of Lindt and its Gold Teddy in a case brought by Haribo.1
Swiss chocolate manufacturer Lindt & Sprüngli has sold the “Lindt Teddy”, a chocolate bear wrapped in golden foil with a red ribbon around its neck and the “Lindt” logo on its stomach, during the Christmas season since 2011.
German fruit gum producer Haribo, which is extremely well known with its gummy bears that it has sold since the 1960s, filed a legal challenge. Haribo had subsequently registered the word marks “Gold Bear” and "Gold Bears” and now saw its rights infringed by the “Lindt Teddy”.
The legal dispute went through several instances. After Haribo had prevailed at Regional Court level and the Higher Regional Court subsequently decided in favor of Lindt in the second instance, the German Federal Court of Justice now issued its decision on 23 September 2015 (Case I ZR 105/14). In the ruling, it followed the arguments set out by the Higher Regional Court and denied any likelihood of confusion. Lindt may therefore officially keep the "Lindt Teddy" in its product range.
The judgment is of fundamental importance insofar as it is the first Federal Court of Justice ruling on a cross-collision of a word mark with a shape mark. The Court’s presiding judge stated that the proceedings had touched on “new legal ground in terms of trademark law”. It had to be assessed whether the relevant 1 BGH. 23/09/2015, I ZR 105/14 public would confuse a word mark and a three-dimensional product design. When comparing the marks, it did not have to taken into account whether the shape of Haribo gummy bears was similar to the shape of the "Lindt Teddy”.
The Federal Court of Justice clarified that when comparing a word mark with a product design, similarity could only be given in case of the same meaning or concept. Conceptual similarity is given where the word mark is the most obvious, unforced and exhaustive name for the three-dimensional shape from the relevant consumers' view. This is precisely what the Federal Court of Justice did not consider as fulfilled in the case at issue. Not everyone would automatically say "gold bear" when referring to the “Lindt Teddy” The judges held that the “Lindt Teddy” could also be referred to as “Teddy", “Chocolate Bear” or “Chocolate Teddy” by consumers. The "Lindt" or "Lindt Teddy” logos and the inclusion in the "gold bunny" product range would also argue against likelihood of confusion.
The Federal Court of Justice made it clear that conceptual similarity between a word mark and a product design would only be given in exceptional cases, which in general would have to meet stringent requirements. Otherwise, there was a risk that through conceptual similarity between a word mark and a threedimensional mark, goods could be monopolized by means of a word mark.
Reference to the word mark “Gold Teddy”, registered by the gummy bear producer only after having become aware that the “Lindt Teddy” was introduced, was inadmissible. The Federal Court of Justice considered this to be an anti-competitive intention by Haribo.
Finally, the Federal Court of Justice denied Haribo's claims under competition law. The “Lindt Teddy” was not an imitation of Haribo's gold bear products. To this end, the products did not resemble each other sufficiently.
In practice, the judgment means that, when introducing product packaging, it must be examined if there is a word mark, which is the “obvious, unforced and exhaustive name of the threedimensional design”. Only then, trademark infringement may be given – a risk that exists only in absolutely clear-cut cases. The Federal Court of Justice emphasized that a company may not virtually monopolize certain product forms by means of a word mark. It is supposed to be prevented that by registering a word mark a manufacturer can obtain an exclusive right to sell confectionery products in a particular form, such as in the shape of bears.