Haribo, Lindt Trademark Case May Clarify Vague—but Delicious—Area of German Law

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By Jabeen Bhatti

March 17 — An upcoming case over visual trademark infringement at Germany's top civil court is expected to answer an open and “dogmatic” question regarding German trademark rules, attorneys told Bloomberg BNA.

The two-year old case centers on alleged infringement by Swiss chocolate company Lindt & Sprüngli AG, of German confectionary company Haribo's word trademark “Goldbären” (“Gold Bear”). Specifically, Haribo claims that a three-dimensional gold-foiled chocolate bear called Lindt Teddy is a visual infringement of its Goldbären word mark, according to court files.

The case is expected to be heard by the Federal Court of Justice (BGH) on June 25 with Haribo likely to lose, attorneys said. Even so, attorneys are watching the case with great interest because suing a company over the visual infringement of a word trademark is a complicated legal issue with courts diverging on the interpretation of the law, Ulf H. Grundmann, partner at King & Spalding's Frankfurt office, told Bloomberg BNA.

“It's a difficult, dogmatic question whether a 3-D chocolate bear amounts to an infringing visual representation of a word mark,” Grundmann said, explaining that a visual mark infringing on a word mark is not fully addressed in the law, but possible in accordance with the trademark law's structure.

Courts Disagree Over Word Mark Law 

In the first instance, the Regional Court of Cologne (Az. 33O 803/11) upheld Haribo's claim and decided on Dec. 18, 2012 that Lindt's chocolate gold bear was a visual infringement of Haribo's well-known Goldbären word mark.

Lindt's bear inevitably evoked connotations with Haribo's bear, the court said.

On appeal by Lindt, the Higher Regional Court of Cologne (Az.6 U 230/12) on April 11, 2014, sided with the Swiss company. The judges ruled there were several additional levels of abstraction separating the Lindt's bear shaped chocolate from the Goldbären word mark.

The Lindt Teddy was an obvious addition to Lindt's product line which includes the famous Lindt Easter bunnies and did not take unfair advantage of Haribo's Goldbären by “approximating” its teddy to Haribo's gold bears, the court said.

Hopes for Result Against Haribo 

Lindt officials said they were are anticipating the BGH to finally settle the dispute.

“A legally binding interpretation of this question is very important for the trademark law”, Sylvia Kälin, head of corporate communications at Lindt told Bloomberg BNA.

“Lindt and Haribo have both agreed that this issue should be brought in front of the highest court to have legal certainty,” Kälin added.

Haribo declined to comment on the case until after the BGH's ruling.

Meanwhile, some attorneys said they hoped Haribo would lose.

“There is a tendency among the regional courts to rule in favor of famous brands and to forbid any products that remotely look like the brand's product, ” Tobias Bier, partner at BBS in Hamburg told Bloomberg BNA. “I hope that the BGH will cut back the exaggerated protection of famous brands in its ruling on this case.”

To contact the reporter on this story: Jabeen Bhatti in Berlin at correspondents@bna.com

To contact the editor responsible for this story: Derek Tong at dtong@bna.com

The Regional Court of Cologne ruling can be found, in German, at http://bit.ly/1FpDg1q.

The Higher Regional Court of Cologne ruling can be found, in German, at http://bit.ly/1BLDXRy.