The Gold Bears – Lindt wins against Haribo

A years-long legal dispute between the well-known confectionery manufacturers was decided today. The Federal Court of Justice (BGH) ruled that the Lindt teddy may continue to be golden.

The fruit gum giant Haribo distributes gummy bears in gold-coloured packaging under the designation "GOLDBÄREN" and is the proprietor inter alia of the registered word marks "GOLDBÄREN", "Goldbär" and "Gold-Teddy" as well as the abstract colour mark "Gold". In a depiction on the packaging, a bear with a red ribbon can be seen. The Swiss company Lindt distributes – in addition to the well-known chocolate Easter gold hare – a chocolate bear wrapped in gold foil and decorated with a red ribbon.

Haribo is of the view that the design of this "Lindt Teddy" constitutes a pictorial representation of the word "GOLDBÄR" and therefore infringes its trade mark rights as well as competition law provisions relating to the "gold bear figure" and the "gold bear product form". Lindt was therefore claimed against by Haribo for an injunction, information, damages and destruction.

The Regional Court (LG) Cologne initially ordered Lindt to comply with the claim, as it was of the opinion that the attacked product designs impaired the distinctiveness of the well-known claimant's mark "GOLDBÄREN" without justifying reason in an unfair manner.

The Higher Regional Court (OLG) Cologne, by contrast, dismissed the action and took the view that the designation "GOLDBÄR" did not constitute an obvious designation for the consumer of the attacked product. Merely the form and colour of the design of Lindt's product would not evoke in the public any straightforward mental association with the well-known mark "GOLDBÄREN". The trade would rather be straightforwardly directed to the company "Lindt" by the word elements "Lindt" or "Lindt-Teddy" contained on the product designs and the inclusion in the product range with the "gold hare". In the absence of sufficient similarity and likelihood of confusion, claims based on the aspect of protection against unfair imitation under competition law also did not come into consideration.

Court decision

By judgment of 23.09.2015 – Az. I ZR 105/14 the Federal Court of Justice (BGH) has now decided that the distribution of a chocolate figure in the form of a bear wrapped in gold foil and provided with a red collar by Lindt neither infringes the gold bears marks of Haribo nor constitutes an unfair imitation of its fruit gum products. According to the Federal Court of Justice (BGH), for the assumption of a likelihood of confusion or a mental association, there is a lack of similarity between the Haribo marks and the designs of the Lindt bears. When comparing a word mark with a three-dimensional product design, the similarity in terms of meaning is decisive. The form of the Haribo gummy bears is irrelevant in this regard. If only the designation "Goldbären" or "Goldbär" came into consideration for the Lindt product, sufficient similarity and thus likelihood of confusion could be given. Here, however, the obvious designations of the Lindt products as "Teddy", "chocolate bear" or "chocolate teddy" also come into consideration. Haribo cannot rely on the word mark "Gold-Teddy" since it only registered this mark after becoming aware of Lindt's intention to distribute. An unfair imitation of the Haribo products was likewise denied. In this regard, the Haribo gummy bears and the Lindt chocolate figures are to be compared. Sufficient similarity does not exist.

Conclusion

A registered word mark sometimes does not protect against product designs of competitors that come close to one's own product design.