The “gold bunny” has occupied the courts for many years (see in particular OLG Frankfurt/Main, GRUR-RR 2008, 191; BGH GRUR 2011, 148; OLG Frankfurt am Main, GRUR-RR 2012, 255; BPatG, GRUR 2011, 68; OLG Frankfurt am Main GRUR-RR 2004, 136; Austrian Supreme Court, GRUR Int 2005, 945; BGH GRUR 2007, 235; ECJ GRUR 2011, 425 and ECJ GRUR 2012, 925).
In the latter decision, the ECJ held that the shape of the “golden bunny” with a red ribbon and bell was not registrable as a Community trade mark for lack of distinctive character.
Lindt thus did not have a shape mark on the “Gold Bunny”.
In the current proceedings, Lindt claimed that it had acquired a colour trade mark on the golden hue of the “Goldhase” by general acceptance in trade under Section 4(2) MarkenG. Lindt submitted that the Gold Bunny was offered as 10 g, 50 g, 100 g, 200 g, 500 g and 1 kg chocolate bunny. There were different varieties, which were distinguished externally above all by the colour of the collar. The Lindt Gold Bunny was developed in 1952 and has been offered in Germany in gold foil ever since. It has been marketed in Germany in the current gold colour since 1994. Lindt has sold more than 500 million Gold Bunnies in Germany alone over the last 30 years. The Lindt Gold Bunny is by far the best-selling Easter Bunny in Germany. Its market share in Germany in 2017 was over 40%. Lindt promoted the Gold Bunny extensively in a variety of different media before and at Easter. Furthermore, Lindt submitted a survey expert opinion from September 2018, according to which almost 80% of the consumers would understand the golden colour as an indication of Lindt’s origin.
Furthermore, it was undisputed that Lindt does not use the gold shade for all or numerous of its products and thus not as a “house colour”.
The Regional Court of Munich I upheld the action on the basis of a colour mark acquired by general acceptance in trade under Section 4 No. 2 MarkenG (WRP 2019, 1625). The Higher Regional Court of Munich reversed the first instance decision and dismissed the action (WRP 2020, 1633). In its reasoning, the Higher Regional Court of Munich essentially stated that the golden hue of the Lindt golden bunny had not acquired a reputation for the product chocolate bunny. The submitted survey expert opinion did not take into account the fact that the plaintiffs did not use the golden colour for chocolate bunnies in general, but only for a very well-known and successful product. The alleged association of the golden colour with the “Lindt company” for chocolate bunnies was based solely on the extraordinary fame of the Lindt golden bunny and did not establish any market validity for the colour of the golden bunny for every form of chocolate bunny wrapped in corresponding gold foil. Accordingly, the large-scale use of the gold colour for the defendant’s bunnies alone did not constitute use as a trade mark.
The Federal Supreme Court took a different view and held that Lindt had indeed acquired a use mark pursuant to § 4 No. 2 MarkenG by general acceptance in trade of the reputation of the gold colour for the gold bunny.
According to § 4 No. 2 MarkenG, trade mark protection arises from the use of a sign in the course of trade to the extent that the sign has acquired a reputation as a trade mark within the relevant public.
In this respect, the Federal Supreme Court referred to the survey expert opinion submitted by Lindt, according to which more than 80% of the respondents would consider the golden colour to be an indication of Lindt’s origin. As a rule, a degree of association exceeding 50% would be sufficient for the assumption of acceptance in the relevant public pursuant to Section 8 (3) MarkenG (e.g. BGH GRUR 2015, 581 – Langenscheidt – Gelb and GRUR 2015, 1012 – Nivea – Blau). Since the degree of association required for a reputation within the relevant public within the meaning of Section 4 No. 2 MarkenG may be lower than in the case of passing off (see Ströbele/Hacker/Thiering, on Section 4, para. 47 and Section 8, para. 665), a degree of association of more than 50% is a fortiori sufficient for a reputation.
Contrary to the opinion of the Court of Appeal, it was also not necessary for the reputation of a colour mark that it was a so-called “house colour” for all or at least for a large number of goods of the company concerned. This requirement could not be inferred from the provision of § 4 No. 2 MarkenG. The acquisition of reputation only required that the sign in question served as an indication of the origin of a product and, as explained, these requirements were met here.
The Federal Supreme Court did not rule on the merits of the case. Instead, it set aside the appeal judgment and remanded the case because the appeal court still had to make findings on the alleged infringement of the colour mark. The decision of the Higher Regional Court of Munich in the reopened appeal proceedings remains to be seen.
