Germany: Federal Court of Justice confirms trademark protection for Lindt’s “Gold Bunny” paint | Hogan Lovells

background

Lindt & Sprüngli argued before the lower courts that the golden color of their famous chocolate Easter bunny had achieved a high public reputation in recent decades through intensive use and advertising. Accordingly, consumers would associate the color with Lindt & Sprüngli and its world-famous “Gold Bunny”. Lindt & Sprüngli supported this argument with the help of surveys and showed that over 70% of those questioned associated the golden color with the Swiss chocolate manufacturer. The first instance, the Regional Court of Munich I, agreed with this view and recognized the special gold tone due to its public reputation as a color mark acquired through use (Az. 33 O 13884/18).

The defendant, who had been sued for selling his own golden Easter bunny, then appealed the decision of the regional court. The Munich Higher Regional Court granted the appeal and decided against Lindt & Sprüngli in July 2020. The court of second instance ruled that the golden color of the Easter bunny had not achieved the necessary reputation, although the results of the Lindt & Sprüngli surveys with regard to the reputation of the golden color exceeded the required thresholds.

The Munich Higher Regional Court found that sufficient awareness of abstract color brands was only accepted if a company used a certain color as a “house brand” for a large one

Diversity of the goods and services offered. In the case of Lindt & Sprüngli, however, the golden color would only have been used for a very specific Easter bunny, not as a house brand.

Lindt & Sprüngli has appealed the decision.

decision

The Federal Court of Justice granted the appeal, reversed the decision in the second instance and referred the matter back to the Munich Higher Regional Court with the following confirmations:

• Lindt & Sprüngli has proven that the golden color of the world-famous chocolate bunny has achieved a sufficient reputation for color brand protection acquired through use. According to the survey submitted by Lindt & Sprüngli, the degree of association of the golden color of the foil of the “golden bunny” was over 70% and thus above the required threshold of 50%.
• In order to obtain protection for a trademark acquired through use, it is not necessary that the color trademark is used as the “corporate color” for all or many of the company’s products.
• Regarding the issue of trademark protection, it is irrelevant whether the public would also see the golden color as an indication of the origin of Lindt & Sprüngli if the gold tone for chocolate bunnies was in a different form than the well-known “golden bunny”.
• The fact that the golden color of Lindt’s Easter bunny is used together with other well-known design elements of the “gold bunny”, e.g. the red ribbon and the small golden bell, does not speak against the reputation of the golden color.

The press release of the Federal Court of Justice is available here (German language). The reasoning of the court is expected to be published in the coming weeks.

The Federal Court of Justice has referred the matter back to the Munich Higher Regional Court, which must now examine whether the gold-colored foil used by the defendant for chocolate bunnies violates the Lindt color trademark.

graduation

The decision is good news for brand owners. It confirms that the standards applied by the Munich Higher Regional Court with regard to the necessary proof of recognition for color trademarks acquired through use lacked a legal basis: For protection as a color trademark acquired through use, it is not a prerequisite that trademark owners use the respective color as a “corporate color” or “house logo” for a variety of goods and services, such as in the case of “Nivea-Blau”. The decisive factor is whether the trademark owner can prove that the public recognizes the color as an indication of origin. Lindt & Sprüngli has successfully proven this with the golden color of its world-famous chocolate bunnies.