The First Civil Senate of the Federal Court of Justice, which is responsible, inter alia, for trade mark law, once again had to decide whether the distribution of similar chocolate bunnies can be prohibited on the basis of the three-dimensional trade mark "Lindt-Goldhase" registered for chocolate goods.
The trade mark registered on 6 July 2001 consists of a sitting chocolate bunny wrapped in gold foil with a red collar with a bow and little bell and the imprint 'Lindt GOLDHASE'. The chocolate manufacturer Lindt & Sprüngli brought an action for injunctive relief, information and damages against the manufacture and distribution by Riegelein of a chocolate bunny which, in its view, could be confused with its trade mark.
In October 2006, in the first appeal proceedings, the Federal Court of Justice overturned the judgement of the Higher Regional Court of Frankfurt a. M. dismissing the action and referred the case back to the Court of Appeal for a new hearing and decision (judgement of. 26.10.2006 - I ZR 37/04, BGHZ 169, 295 - Goldhase I; cf. press release no. 146/2006 of 27.10.2006). In the second appeal proceedings, the Upper District Court again denied a likelihood of confusion between the two chocolate bunnies because, in its opinion, the opposing designs were not sufficiently similar.
The Federal Supreme Court also overturned this decision and referred the case back to the Higher Regional Court.
At the hearing before the Upper District Court, a copy of the Riegelein bunny had been presented. Since the Upper District Court was concerned with the exact colouring, which could not be reliably determined from the photographs on file, the plaintiff had amended its application to refer to a "chocolate bunny according to the specimen submitted at the hearing ...". In its decision denying the likelihood of confusion, the Upper District Court had also relied precisely on the colour of the foil; the Riegelein bunny on file was characterised by a rather bronze-coloured foil, which was clearly distinguishable from the bright gold foil of the Lindt bunny. The Federal Supreme Court did not see itself in a position to review this assessment. This was because the Riegelein bunny presented at the hearing before the Higher Regional Court was no longer in the files that had reached the Federal Supreme Court; a search at the Higher Regional Court had also been unsuccessful. There was also no agreement between the parties as to whether a Riegelein hare submitted in the appeal proceedings matched the lost hare in colour.
However, this circumstance was not the only decisive factor for the reversal of the appeal judgment: According to the Federal Supreme Court, the likelihood of confusion between the two chocolate bunnies cannot be denied on the grounds of the Court of Appeal. The Court of Appeal did not correctly determine the overall impression of the two designs, which is composed of the individual components (shape and colour of the bunnies as well as the further design features such as a red ribbon with little bells, painted face). In particular, it did not take into account the results of a traffic survey without an error of law. The traffic survey concerned a sitting Lindt hare wrapped only in gold foil, with no writing and no painted design features. When asked about the company origin, a large proportion of the respondents had named Lindt & Sprüngli. The Court of Appeal had concluded from this that the increased distinctiveness of the Lindt hare was also derived from its shape and colour. Against this background, the Federal Supreme Court criticised the Upper District Court for not sufficiently substantiating its opinion that the other design features that differ between the two hares are of decisive importance.
Judgment of the Federal Court of Justice (BGH) of July 15, 2010 - I ZR 57/08
Previous instances:
OLG Frankfurt am Main - Judgment of November 8, 2007 - 6 U 10/03 LG Frankfurt am Main - Judgment of December 19, 2002 - 2/3 O 443/02
Source: Press release of the BGH
Goldberg Attorneys at Law
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist attorney for information technology law (IT law)
E-mail: info@goldberg.de
