Trademark infringement: Lindt-Teddy won against Haribo's Goldbear

The German Federal Court of Justice resolved a trademark dispute between two confectionery companies – Lindt and Haribo – in favor of the Swiss chocolate producer (judgment of 23 September 2015, case no. I ZR 105/14). Haribo claimed that its word marks “Goldbear”, “Goldbears” and “Gold-Teddy” had been infringed by Lindt’s chocolate bears wrapped in golden foil (“Lindt-Teddy”) and asserted claims for injunction, information, destruction and damages. After the Regional Court in Cologne in the first instance had ruled in favor of Haribo, the judgment was overturned on appeal by the Higher Regional Court in Cologne, the decision of which was now confirmed by the Federal Court of Justice.

The dispute focused on the question whether the three-dimensional design and shape of Lindt-Teddies and the mere word marks of Haribo could be considered as similar within the meaning of Art. 14 para. 2 No. 2 and 3 of the German Trademark Act. Since the standard criteria of visual or oral similarity do not apply when comparing a 3D shape and a word, the conceptual similarity was the only decisive factor. According to the Federal Court of Justice, a conceptual similarity is given if the word mark is the most obvious, unforced and exhaustive name for the three-dimensional shape from the point of view of the relevant consumers. The form of the product for which the (older) word mark is used was irrelevant, so that the assessment did not include the shape of Haribo’s gummy bears.

The judges of the Federal Court of Justice explained that strict standards applied to the assessment of similarity, since otherwise the design of goods which cannot be monopolized by a three-dimensional mark could be monopolized by means of a word mark. For instance, the image of a standing Haribo bear on which the claim was also based and the Lindt-Teddy in golden foil lacked a sufficient degree of similarity. Consequently, in order for a word mark not to grant a more extensive protection, it was contrary to the strict standards of assessment if the word mark was only one of several obvious terms that could be used to depict the product form.

Since the Federal Court of Justice further took into consideration that Lindt’s products could be described using a number of different terms (such as “Teddy”, “Chocolate-Bear” and “Chocolate-Teddy”), all of which were as obvious as the term “Goldbear”, it held that the degree of similarity was not sufficient. Additionally, it denied Haribo’s right to plead on the basis of the word mark “Gold-Teddy” since it had applied for a trademark registration only after it had heard of Lindt’s intention to sell the teddies. The court found that this constituted an unfair commercial practice pursuant to Art. 4 No. 10 of the German Act Against Unfair Competition. Additionally, according to the opinion of the Federal Court of Justice, Haribo cannot rely on the supplementary protection of Art. 4 No. 9 of the German Act Against Unfair Competition since the design of the Lindt-Teddies does not resemble the Haribo gummy bears sufficiently.

Hence, in practice, when designing a product it is to be considered that the meaning of the product designation must not collide with any older (word) marks. Nevertheless, under the strict standards set out in the recent judgment of the Federal Court of Justice, the degree of similarity between a word mark and a product design will only be regarded as sufficient in exceptional cases, since there typically is more than one obvious term that can be used in order to describe the concept of a product design.