Germany: Federal Court of Justice confirms trademark protection for color of Lindt’s “Gold Bunny”

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A small hop for chocolate bunnies, a big step for Swiss chocolate manufacturer Lindt & Sprüngli: The German Federal Court of Justice held that the particular shade of golden color is protected for Lindt & Sprüngli as a color trademark acquired by use due to the reputation it enjoys with the public (decision from 29 July 2021 – I ZR 139/20). The Federal Court has therefore overruled the prior appeal court decision and referred the case back to the appeal court that now has to re-examine the case and decide whether the golden wrapper used by the defendant for its own chocolate bunnies constitutes an infringement of Lindt & Sprüngli’s color trademark.

Background

Lindt & Sprüngli argued before the lower courts that the golden color of its famous chocolate Easter bunny had gained great public reputation through intensive use and advertisement over the last decades. Accordingly, consumers would associate the color with Lindt & Sprüngli and its world-famous “Gold Bunny”. Lindt & Sprüngli substantiated this argument with the aid of surveys, proving that over 70% of the interviewees associated the golden color with the Swiss chocolate manufacturer. The first instance, the Regional Court Munich I, agreed with this view and recognized the particular shade of golden color as a color trademark acquired by use due to the reputation it enjoys with the public (file reference 33 O 13884/18).

The defendant, who had been sued over the sale of its own golden Easter bunny, subsequently appealed against the Regional Court’s decision. The Higher Regional Court Munich granted the appeal and ruled against Lindt & Sprüngli in July 2020. The second instance Court decided that the golden color of the Easter bunny had not acquired the necessary reputation, even though the results of the surveys conducted by Lindt & Sprüngli regarding the reputation of the golden color surpassed the required thresholds.

The Higher Regional Court Munich stated that sufficient reputation of abstract colour marks had only ever been accepted where a company uses a certain colour as its “house mark” for a large

variety of goods and services it offers. However, in the case of Lindt & Sprüngli, the golden color would have been used only for a very particular Easter bunny, not as a house mark.

Lindt & Sprüngli appealed the decision.

Decision

The Federal Court of Justice granted the appeal, annulled the second instance decision and remitted the case to the Higher Regional Court Munich with the following confirmations:

  • Lindt & Sprüngli has proven that the golden color of the world-famous chocolate bunny acquired sufficient reputation for color mark protection acquired by use. According to the survey submitted by Lindt & Sprüngli, the degree of association of the golden color used for the foil of the “Gold Bunny" surpassed 70% and thus exceeded the required threshold of 50%.
  • In order to gain protection for a trademark acquired by use, it is not necessary for the color mark to be used as a "house color" for all or numerous products of the company.
  • For the question of trademark protection it does not matter whether the public would also consider the golden color as an indication of origin for Lindt & Sprüngli if the shade of gold was used for chocolate bunnies in a shape other than that of the well-known “Gold Bunny”.
  • The fact that the golden color of Lindt’s Easter bunny is used together with other famous design elements of the "Gold Bunny", e.g. the red ribbon and small golden bell, does not argue against a reputation of the golden color.

The Federal Court’s press release is available here (German language). The Court’s reasoning is expected to be released in the coming weeks.

The Federal Court remitted the case to the Higher Regional Court Munich, which now has to examine whether the gold-colored foil used by the defendant for chocolate bunnies infringes Lindt’s color mark.

Conclusion

The decision is good news for trademark owners. It confirms that the standards applied by the Higher Regional Court Munich regarding the required evidence of reputation for color marks acquired by use lacked a legal basis: For protection as a color trademark acquired by use, it is not a prerequisite for trademark owners to use the respective color as their “corporate color” or “house sign” for a large variety of goods and services, as, for instance, in case of “Nivea blue”. What matters is whether the trademark owner can prove that the public recognizes the color as an indication of origin. Lindt & Sprüngli successfully demonstrated this for the golden color of its world-famous chocolate bunnies.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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