Lindt’s chocolate bears: did a three-dimensional mark infringe a word mark

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In December 2012, the Regional Court of Cologne ruled that Lindt’s chocolate bear infringed Haribo’s GOLDBÄREN (in English “Gold Bear”) word marks. The Court accepted that Lindt did not use the word GOLDBÄREN but it held that the sight of Lindt’s three-dimensional chocolate bears would call to mind Haribo’s gold bears, resulting in a dilution of its mark. The Lindt mark is depicted here.

Lindt appealed to the Higher Regional Court of Cologne. The Appeal Court ruled that although a word mark, such as GOLDBÄREN, could be infringed by a three-dimensional shape, there was no such infringement in this case. There would only be an infringement where the sign was the obvious, unforced, self-contained and distinctive title and thus the most fitting description of the shape sign. In the Court’s opinion, that was not the case here as there were additional levels of abstraction that separated Lindt’s chocolate teddy shape from the GOLDBÄREN mark. The Court considered that the first instance court had attached too much importance to the colour and shape of the Lindt bear. In particular, it ruled that the overall impression conveyed by Lindt’s chocolate teddy was affected by the imprints of “Lindt”, “Lindt-Teddy” and the Lindt logo, a factor to which the first instance court had attributed insufficient weight.

Haribo in turn appealed to the German Federal Court. The Federal Court agreed with the Appeal Court and dismissed the appeal. It explained that a similarity between a word mark and a three dimensional shape can only result from a similarity in meaning; only the word mark and the allegedly infringing shape are to be compared. In other words, it was not a case of comparing the shape of the Haribo bear with the Lindt bear.

A similarity in meaning required that the word mark was the obvious and natural designation of the shape. In this case, there was no such similarity of meaning The Lindt bear was not obviously and naturally referred to as GOLDBÄREN (or, in English, Gold Bear).  Words like (in English) “chocolate bear” or “chocolate teddy” were at least as obvious.

Haribo was also the proprietor of the mark GOLD-TEDDY but it had only filed this mark after it had known that Lindt was bringing its chocolate bear to the market and use of the mark against Lindt would be unfair.