Haribo wins gummy bear trademark dispute
German confectioner Haribo has won a trademark dispute against Swiss chocolatier Lindt in one of the first rulings on whether a word mark can be infringed by a three-dimensional product design.
On Tuesday, a regional court in Cologne upheld Haribo’s complaint that a Lindt chocolate bear wrapped in gold foil and wearing a red ribbon is a visual representation of ‘gold bear’, the trademarked name under which packets of multi-coloured Haribo gummy bears are sold.
The court agreed with Haribo that Lindt’s packaging could confuse shoppers, particularly as the products are often sold next to or near each other in supermarkets, and because Haribo’s packaging also features a gold bear wearing a red ribbon.
Lindt argued that this was not the case, as Haribo’s bears are much smaller and made of jelly instead of chocolate.
The chocolatier also claimed that the product is known as the ‘Lindt teddy’ and is a variation of the well-known ‘Lindt bunny’, a chocolate rabbit wrapped in gold foil, but the court rejected this argument and ruled that further sales of the bear should be banned.
A spokesperson for Haribo said: “We are very pleased with the court’s decision. The word ‘Goldbären’ itself has a 90-year heritage in Germany and during this time the company has invested a lot of time, money and effort in order to establish ‘Goldbären’, which is now synonymous with the Haribo brand.”
Lindt did not immediately respond to requests for comment, but both parties have reportedly agreed to take the case to a higher court for clearer guidance. Until then, Lindt will continue to sell its chocolate bear.
Commenting on the case, Henning Hartwig, a partner at Bardehle Pagenberg in Munich, said: “While conflicts between 2D and 3D marks have been decided by national courts (confirming that both, in principle, may produce the same overall impression), I am unaware of any precedent covering a conflict between a word mark and the shape of a product.
“In fact, the Court’s assumption that the shape of a teddy bear wrapped in gold foil was a visual representation of the word “gold bear” appears questionable,” he said, adding that it is unclear whether higher courts will confirm Cologne’s ruling.
Jens Matthes, a partner at Allen & Overy LLP in Dusseldorf, said the judgement further blurs the boundaries between trademark categories.
“Word marks cannot be considered different from 3D marks or colour marks per se anymore. As regards 3D designs in general, this ruling alerts the community that a mere search for other 3D marks or for registered designs does not suffice to clear the availability of a design,” he said.
While it is unclear whether the ruling will apply to cases involving less well-known brands, Matthes said the court’s decision also highlights the importance of thinking more deeply about how consumers interpret designs, and may encourage a more conceptual approach to branding.
“Companies will be encouraged to think about brand concepts that combine a word element with a figurative or three-dimensional element. Purely made-up words could become less attractive as they do not carry a conceptual association.
“Made-up words have traditionally been considered more distinctive and thus legally stronger than words that do have a meaning,” he said. “The trick is to find a word that is not descriptive of the related goods or services, but that nevertheless carries a message that is linked or related to the product.”
