Deals & Cases
German Federal Court of Justice confirms trademark protection for the colour gold of the “Lindt Gold Bunny”
The German Federal Court of Justice (BGH) has ruled that the colour gold of the famous “Lindt Gold Bunny” enjoys trademark protection acquired by use due to the reputation it enjoys with the public (decision from 29 July 2021 – I ZR 139/20).
The decision of the German BGH is an important milestone in the trademark infringement proceedings initiated by Lindt & Sprüngli against a competitor who marketed chocolate bunnies in a packaging in a golden colour similar to the colour of the “Lindt Gold Bunny”.
Lindt & Sprüngli argued before the lower instance courts that the golden color of its famous chocolate Easter bunny enjoys high public reputation due to its intensive use for decades. Whilst the Regional Court Munich I supported this view, the Higher Regional Court of Munich dismissed the infringement action in the second instance proceedings on the basis that the golden colour had not acquired the necessary reputation because it was not used by Lindt & Sprüngli as their “house mark” for a large variety of goods, but only for one very particular chocolate bunny.
With its decision of 29 July 2021, the BGH granted the appeal of Lindt & Sprüngli, annulled the second instance decision and held that Lindt & Sprüngli had successfully proven that the golden colour of the “Lindt Gold Bunny” had acquired distinctiveness as a trademark for chocolate bunnies within the relevant public. According to the survey conducted by Lindt & Sprüngli and submitted to the court, more than 70% of the persons surveyed associated the golden colour used for the foil of the “Lindt Gold Bunny” with Lindt & Sprüngli. The fact that the golden colour is used together with additional design elements of the “Lindt Gold Bunny” which are also known to the public (sitting bunny, red ribbon with golden bell, elegant drawings, and inscription “Lindt GOLDHASE”) does not inhibit the use of the golden colour as a trademark. It is decisive that the relevant public sees an indication of origin in the use of the golden colour for chocolate bunnies even if it is used together with these other design elements.
MLL is happy to strategically advise Lindt & Sprüngli in the cross-border protection of the “Lindt Gold Bunny”. The team is composed of MLL’s attorneys-at-law Peter Schramm (Partner) and Louisa Galbraith (Associate).
