Perseverance is the death of the (false) hare

A false hare commonly translates to a mean meatloaf. At the well-known chocolate manufacturer Lindt & Sprüngli, the term “false hare” will evoke rather different associations. Lindt & Sprüngli, that is the manufacturer of the well-known golden bunny, which during Easter time sold by the millions worldwide with a red bow and a small bell around its neck. No wonder that such success would awaken the desires of competitors. Accordingly, numerous efforts have been made to cut a slice of the success cake with similar golden bunnies hopping across the checkout counters. Nor is it surprising that Lindt & Sprüngli has always tried to defend itself in court against such imitations. After all, what could be better than a monopoly on this high-end chocolate version of the Easter Bunny? Even though most imitations of the Golden Bunny have generally failed to achieve lasting success in the consumers’ estimation, Lindt’s attempts to assert itself against imitations in court have not always been marked by victories. On the contrary.

In particular, the approach of the Swiss chocolate manufacturer to protect the mere design of its golden bunny as a so-called three-dimensional trademark and to take action against imitators in various countries based on this trademark ultimately failed in 2012 due to the opposition of the highest European court, the ECJ. The judges in Luxembourg, like the previous instances, were determined not to  to grant Lindt & Sprüngli any exclusive rights to the mere design of a sitting bunny in golden foil and red pleated ribbon, since such product design, according to the judges, could not be registered as a trademark for lack of distinctiveness. This could probably have been seen differently; in the time that followed, it became difficult for Lindt to defend itself against imitations, depending of course on how clever the competition was.

In the meantime, Lindt & Sprüngli itself became the target of an injunction when it dared to branch into the animal kingdom and place  a bear wrapped in gold foil on the store shelves. Haribo, the manufacturer of Gold Bears, was not too amused by this  and filed a lawsuit. Ultimately, however, the gummy bear failed on its course through the instances before the Federal Court of Justice (BGH) and had to give its chocolate counterparts their due place in the confectionery range of supermarkets. No risk of confusion between the bears, the judges found.

But back to the golden rabbit. Its singular position was recently attacked by a small manufacturer from the Allgäu region, Confiserie Heilemann, which also marketed a chocolate bunny in gold-colored packaging. Lindt & Sprüngli then sued for injunctive relief before the Munich District Court and won. The judges along the Isar granted the Swiss the desired protection in the form of a trade mark acquired by use, i.e. not a trademark entered in the register, but on the basis of a sign, in this case the colour “gold,” which has achieved “market recognition” among consumers through intensive use, which according to the law necessitates a very high degree of renown. In addition to turnover figures and extensive evidence of previous sales of the “Lindt Gold Bunny”, the District Court relied on a traffic report submitted by Lindt. This showed that around 76 percent of the total population associate the Gold Bunny with a particular company and that 72 percent even correctly name this one particular company, namely Lindt.

The defendant confectionery, however, appealed. And won. The competent senate of the Munich Higher Regional Court (OLG) was bothered by the fact that Lindt had only used the gold color for the sitting bunny, and not as a type of “house color” of the company for various products in the same goods or services area, such as Nivea Blue, Telekom Magenta or Milka Purple. However, according to the OLG judges, Lindt can only claim color trademark protection if customers recognised in the “Lindt gold tone” a reference to the origin of the Zurich chocolate factory also for those chocolate bunnies wrapped in gold foil which differ from the Lindt gold bunny due to their other design features. However, according to the OLG Munich, the public would not associate such chocolate bunnies with Lindt, but with other companies, since the “Lindt Gold Bunny” is particularly well known.

This reasoning is hardly convincing, because the OLG Munich ultimately even uses Lindt’s success with the Gold Bunny against them. The truth is likely to be that  consumers are more likely to recognize the differences between imitation products and the originals in the case of very well-known products. However, if one pursues this line of reasoning consistently, almost all imitations of a well-known product can be legitimised in this way, and eventually, in view of the dilution that comes  with numerous imitations, the painstakingly won advantage will be history. Consequently, this view would also mean that the better known a product is, the more easily it may be copied.

This is probably one of the reasons why Lindt & Sprüngli appealed the decision of the Munich Higher Regional Court to the Federal Supreme Court. And the judges in Karlsruhe did not quite want to follow the argumentation of the court of appeal. The final decision of the BGH is not yet available. In the oral proceedings at the end of May, however, Germany’s highest decision-makers on trademark disputes already indicated that almost 80 percent market recognition is a weighty argument in favour of Lindt & Sprüngli.

This does not mean that it has  been decided yet whether there is a likelihood of confusion between the two products on account  of the similarities. From a purely argumentative point of view, however, Lindt’s persistence has already paid off – also for possible proceedings against other imitators. It remains to be seen whether it will be possible to finally slay  Heilemann’s allegedly false hare. The BGH will announce its decision at the end of July. And we will of course report back.

  • Achim Herbertz

    Dr. Achim Herbertz

    • Lawyer specialising
    • Intellectual property rights