Germany’s highest court considers relationship between product shapes and word marks

In a dispute between Swiss chocolatier Lindt and German sweet manufacturer Haribo (Case I ZR 105/14), the German Federal Court of Justice has found that there was no likelihood of confusion between Lindt’s gold-foil-wrapped chocolate bear and Haribo’s word mark GOLDBÄREN (‘gold bears’).

Haribo sells GOLDBÄREN gummy bears in gold packaging featuring a yellow bear with a red ribbon around its neck. It filed suit against Lindt when the latter began selling a chocolate bear wrapped in gold foil with a red ribbon around its neck, alleging that Lindt’s product infringed its word mark GOLDBÄREN.

While Haribo succeeded at first instance, the appeal court reversed the decision. The Federal Court of Justice again ruled in favour of Lindt.

In particular, the court found that there was no likelihood of confusion between the three-dimensional (3D) shape of Lindt’s chocolate bear and the word mark GOLDBÄREN. According to the court, confusion between a 3D shape and a word mark may result solely from a conceptual similarity. Such a similarity requires that the word mark be the sole and obvious choice for the relevant public to refer to the 3D shape. In other words, the mark will not be infringed if there is just one alternative term to designate the product. Here, Lindt’s product could be designated by terms other than ‘golden bear’. A strict standard applies; otherwise, parties could monopolise product shapes by first obtaining protection for a word mark, thus circumventing the tougher requirements for shape marks.

Counsel comment:

Considering for the first time the conflict between a word mark and the shape of a product, the Federal Court of Justice restricted the scope of protection of a very well-known word mark against a product shape. This is good news for the sweet industry, which can continue to offer products in the shape of a bear. However, Haribo’s famous GOLDBÄREN word mark still enjoys a broad scope of protection and Haribo might have stopped the use of a bear shape if it had obtained protection for a 3D mark representing a bear. The decision is a welcome clarification of the scope of protection of word marks.

Carsten Albrecht, partner at FPS Fritze Wicke Seelig