Can a shade of gold be a protected trademark? At least that’s what Lindt demands – and is suing the competition, which also wraps their chocolate bunnies in gold foil. The BGH judgment is still pending.
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“Dressed in gold, adorned with a red ribbon and fitted with a bell” – this is how the Swiss chocolate manufacturer Lindt describes its famous crouching Easter bunny.
But it’s not all Lindt that glitters: Even the competition brings golden Easter bunnies onto the candy shelves, much to Lindt’s annoyance. The company claims the golden hue exclusively for itself. Right? The Federal Court of Justice is negotiating this (BGH) in Karlsruhe. (Az. I ZR 139/20)
Lindt rabbit is the clear market leader
In terms of numbers, Lindt’s “gold bunny” is undisputed: whether as a ten-gram mini or a one-kilo bunny, in whole milk or dark chocolate – no other chocolate Easter bunny is bought so often in Germany.
With more than 500 million copies sold in the past three decades and a market share of over 40 percent (2017), the Lindt rabbit is the clear market leader. But do the other chocolate bunny manufacturers have to do without gold foil as a result?
This is not the first time Lindt has complained
The matter is tricky and does not end up in court for the first time. Between 2002 and 2013, Lindt tried to ban the Easter bunnies from the Franconian Confiserie Riegelein from the market. The dispute goes to the Federal Supreme Court twice – not only because chocolate bunnies that were handed over to the files as objects of illustration are mysteriously lost on the way through the courts.
In the end, the Riegelein-Bunny is allowed to stay. Almost at the same time, in 2012, the European Court (ECJ) that Lindt cannot protect the “golden bunny” with a collar as a three-dimensional community trademark.
The color of the chocolate bunnies should be protected
This time Lindt tries the color. It’s not that easy, however. More than 100 abstract color brands and color combination brands are currently registered with the German Patent and Trademark Office (DPMA) in Munich – for example the light green of the long-distance bus company Flixbus or the blue / silver combination of the Red Bull energy drinks.
But the hurdles are high. “Above all, the color must not be descriptive and must also be suitable as a brand,” explains spokesman Til Huber. In case of doubt, the applicant has to prove with studies that the customers understand the color as a brand.
Heilemann continues to rely on gold packaging
In May 2017, Lindt registered the color mark “gold (Pantone Premium Metallics coated 10126 C)” with the DPMA for chocolate bunnies. But the Confiserie Heilemann from Woringen im Allgäu has applied for the deletion, the procedure is at the Federal Patent Court.
Lindt, in turn, sued Heilemann for injunctive relief and damages. The medium-sized manufacturer, which is now part of the Thuringian Viba Group, also has seated chocolate bunnies in gold foil in its range – with colorful necklaces and bows. In the last instance, the Federal Court of Justice should now decide.
At Heilemann they don’t want to have their Easter bunnies banned. Lindt is trying to “monopolize chocolate bunnies wrapped in gold,” says Viba advisory board chairman Karl Heinz Einhäuser. Heilemann has been selling chocolate bunnies wrapped in gold foil for many years – and was not deterred by this even at Easter 2020 and 2021.
Does the color only stand for the Lindt brand?
Lindt does not want to comment publicly in the ongoing proceedings, but has argued in court above all with the likelihood of confusion. The color difference is minimal, and the Heilemann logo on the rabbit’s flank can hardly be seen. Lindt implies full intention – customers should believe that they have the original “golden bunny” in front of them.
According to Lindt, their own gold tone is “extremely well known”; almost 80 percent of all potential chocolate bunny buyers understand it as a so-called indication of origin. In fact, the Lindt bunny has been wearing gold foil since its beginnings in 1952, and in the current tone since 1994.
But even Heilemann does not want to do without the color – if only because “there is no such thing as a color that is even remotely as attractive as gold”. If you want to know who the rabbit is from, look at the logo.
In the process, Lindt does not refer to the registered color trademark, but claims that the gold acquired trademark protection through use. According to DPMA spokesman Huber, such a “use mark” has the same effects as a registered mark. Their traffic validity must be proven anew every time.
Lindt’s complaint recently dismissed
But unlike the Munich Regional Court I – which found the Heilemann rabbits “strikingly” similar – the Munich Higher Regional Court finally dismissed the Lindt lawsuit. For Lindt, gold is not a classic corporate color (such as Milka purple, Sparkasse red or Nivea blue), the judges said.
The recognition effect of the “gold bunny” is based on a combination of shape and color. Lindt could therefore not claim trademark protection for the gold tone.
The highest civil judges of the BGH now have the final say. It remains to be seen whether they will already announce a verdict.