Gold Bear wars (.... what the OLG Cologne said)

An update on the Haribo vs Lindt Gold Bear trade mark dispute (see the earlier IPKat post here).  The Higher Regional Court of Cologne has now published its decision (see here; case reference: 6 U 230/12  of 11 April 2014) in which it disagreed with the Regional Court of Cologne (Landgericht Köln) and found the bears not to be similar.

Lindt's teddy

By way of background:  upholding a claim brought by confectionery manufacturer Haribo, the Regional Court of Cologne in December 2012 (Regional Court of Cologne, 33O 803/11) decided that Lindt's three-dimensional gold-foiled chocolate bears amounted to an infringing ‘visual representation’ of Haribo's well-known GOLDBÄREN (in English Gold Bear) gummy bear word marks.  While the court had acknowledged that Lindt did not use the word sign GOLDBÄREN , it held that the sight of the shape of Lindt's three-dimensional chocolate bears inevitably produced connotations with Haribo's bears, which could result in a dilution of Haribo's trade mark rights.   The Regional Court expressly noted the significance of the legal issues raised since there had so far been no decision by the German Federal Court of Justice (Bundesgerichtshof, short BGH) on the question of a conflict between a word mark and a three-dimensional product design.

The original gold bears

In its appeal decision Higher Regional Court of Cologne  – in essence – agreed with the defendants.  Yes, said the judges, theoretically a word trade mark, such as ”Goldbär” (gold bear), could be infringed by a three dimensional shape, such as the defendant's chocolate teddy.  However, this could only be the case where the sign (here: gold bear) was the obvious, unforced, self-contained and distinctive title and thus the closest and most fitting description of that shape sign.  The judges did not believe that this was the case here and explained that there were several additional levels of abstraction that separated the Chocolate teddy shape from the Goldbär word mark.  Further, the overall impression conveyed by Lindt's teddy was not only based on its shape and colour but also affected by the imprints "Lindt" and "Lindt-Teddy" and the Lindt logo. Consumers would regard the word element "Lindt-Teddy" in particular as an indication of origin, bearing in mind that the "Lindt-Teddy" was a seamless addition to the Lindt Gold Bunny product line.  The court disagreed with Haribo's view that Lindt had not taken unfair advantage of Haribo's Goldbär by "approximating" its Lindt teddy to Haribo's gold bears in order to exploit the expectations of quality that consumers associate with Haribo's bears.  The judges explained that the defendants were well known confectionery manufacturers and the allegedly infringing product was an obvious addition to its own product line.

An interesting case that will - without much doubt - make it all the way to BGH (Off with all their heads...?! ... the bears' that is, not the judges...)