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                                        Grin and bear it
MW Trade Marks’ Jonathan Wyness examines Haribo gummy bear’s sweet victory over Lindt’s chocolate teddy




O
                 n 18 December 2012 (case           Haribo’s gummy bears. They stressed that            due to their visual appearance that could,
                 reference: 33O 803/11), the        the teddy has the name “Lindt” on it and            in turn, result in an infringement of Haribo’s
                 Regional Court of Cologne          the gummy bear packaging has “Haribo”               trademark rights. They held that the majority
                 (Landgericht Köln) decided         branded across it, so consumers should realise      of consumers would not use terms such as
                 that Swiss confectioner Lindt      that the products come from well known but          ‘gold bear figure’, ‘bear wrapped in gold foil’
& Sprüngli’s gold foil wrapped chocolate            different players in the confectionery business.    or ‘gold-coloured chocolate teddy bear’ but
bears (called “Lindt Teddy” and wearing a red       Lindt further explained that it had intentionally   would pick the closest term when describing
ribbon bow), amounted to an infringement            refrained from using brand names such as            Lindt’s bears.
of German sweetmaker Haribo’s German                “Gold Bear” (“Goldbären” ) or “Gold Teddy”,             This decision is noteworthy because it
trademark registration for the word mark            in order to avoid any confusion and that gold       constitutes the first German decision on a
“Goldbären” (“gold bear”), which appeared           was a traditional Christmas colour. The Swiss       registered word trademark being infringed
on the packaging of their famous gummy              chocolate maker thus invited the court to find      by a three-dimensional product shape. Lindt
bears.                                              that the competing products did not look in         has already announced that it will appeal the
     Haribo has been manufacturing multi-           any way similar, such that consumers would          decision.
coloured gummy bears since 1967.The normal          not be confused.
Haribo gummy bear package features a                     The Cologne Court however agreed with          Discussion
cartoon bear wearing a red ribbon around its        Haribo’s view that consumers were indeed            Lindt may feel hard done by. They had recently
neck and bears the trademark “Goldbären”            likely to refer to Lindt’s bears as “Gold Bears”    failed to register their gold wrapped chocolate
(“gold bear”), which Haribo have registered                                                             bunny as a 3D Community trademark because
since 1975 (shown right, bottom).                                                                       the shape was not considered recognisable
     Last November, Lindt began selling it’s gold          “This decision                               as a trademark. Yet, they now find that their
wrapped chocolate bear in Germany that they
called the “Lindt teddy” (shown top, left).
                                                           is noteworthy                                3D gold wrapped chocolate teddy infringes
                                                                                                        Haribo’s tradmark rights, even though they
     Haribo took action stressing that it owned       because it constitutes                            branded it “Lindt Teddy”, which is not similar
a word trademark for the sign ‘Goldbär’                                                                 to Haribo’s “Gold Bear” brand name.
(German for “gold bear”), as well as this
                                                         the first German                                    The difficulty lies in the fact that consumers
device trademark for a yellow bear wearing a               decision on a                                are not used to relying on shapes as trademarks
red ribbon.                                                                                             (ie, as a means to distinguish between products
      Haribo also argued that its ‘Goldbär’ was           registered word                               of different manufacturers) but will instead
recognised by 95% of the relevant German
consumers. Lindt argued that the gold foil and
                                                         trademark being                                rely on the brand names appearing on the
                                                                                                        packaging when looking for, and especially
red ribbon used on its chocolate bears were                infringed by a                               when asking, for a product. Exceptions to
the same as those used on its Easter chocolate
bunnies, (shown top, right).
                                                        three-dimensional                               this rule would include car radiator grills and
                                                                                                        bottles for spring water that consumers do
     They argued that consumers would                    product shape.”                                apparently rely on as trademarks, but not so
see that the Lindt Teddy was from the same                                                              for confectionery products such as Lindt’s gold
stable as the Lindt Bunny and not related to                                                            wrapped chocolate animals or Werther’s candy


36 Intellectual Property magazine                                  February 2013                        www.intellectualpropertymagazine.com
shape. Both of these were refused protection
by the Office for Harmonization in the Internal
Market (OHIM), despite exhaustive arguments
and significant evidence of use.
     So, the court considered that consumers
would refer to Lindt’s product as a gold bear,
which happens to be a registered trademark
of Haribo and one that appears on their
sweets. This would be logical had Lindt’s
product not included any brand name but
it did, and though the writer is not familiar
with the German market, it is fair to say that
“Lindt” is a well-known brand name for
chocolate in the UK. Would UK consumers
confuse a “Lindt” branded gold bear
shaped chocolate with “Haribo Gold Bear”
branded gummy sweets or think they have
common origins? A factor in this case was
that Haribo’s “Goldbären” trademark was
considered very widely recognised and well
known trademarks generally enjoy enhanced
protection. This is particularly in respect of
activities that might dilute the exclusivity of
the mark, or take unfair advantage of it. In
this case, it was felt that Lindt’s gold bear
product diluted Haribo’s exclusivity in the
“Goldbären” brand name and that by calling
to mind Haribo’s product, consumers might
be inclined to buy Lindt’s product by virtue of
positive association and this would be seen
as taking an unfair advantage of another
trader’s hard work.

Recommendations
Although a first for German courts, there are
other cases of 3D marks clashing with earlier
registrations for 3D marks. For example, the
word “Pelikan” and a device of a pelican
were held to be similar (see Pelikan – T-389/03
Dainichiseika Colour & Chemicals Mfg Co Ltd
v OHIM).
    It is common practice therefore when
clearing a new logo mark for use in a
particular territory, to search for words that
might closely describe the shape. So, for
example, if the proposed mark is a logo of a
tiger, we would also search for relevant word
marks including “tiger”, “lion”, “cat” etc in
the UK, and foreign language equivalents if
other countries are of interest. Adding a word
mark to the shape can help to avoid infringing
rights in the name of the shape but regard
must be given to the particular circumstances       Author
in each country. For example, if the word                          Jonathan Wyness is the senior partner of
that is added to the shape is in English, then                     MW Trade Marks Limited and a fellow
consumers in countries where English is not                        of ITMA. He has worked as an in-house
widely spoken are more likely to refer to                          trademark attorney for an international
the product according to the shape, not the                        luxury goods group for over 10 years, and
                                                                   as a senior trademark attorney for the
foreign word on it. Also, if the earlier right is
                                                                   largest international law firm offering
well known, then even the use of a different
                                                                   trademark services to some of the leading
brand name on the shape may not avoid a                            brand-owning companies in the world.
finding of dilution or unfair advantage.


www.intellectualpropertymagazine.com                         February 2013                          Intellectual Property magazine 37

				
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