The final curtain in the GOLDBEAR saga

Wrong comparison for this case

Haribo's suit against Lindt's golden chocolate bear has provided the trade mark community with a lot to digest (see IPKat posts here, here and here). The premise is interesting: Haribo sued Lindt based on an alleged infringement of its word mark GOLDBEAR - undoubtedly very well known in Germany - by Lindt's three-dimensional golden chocolate bear.

To the surprise of some, Haribo was successful in first instance, only to see the judgment overturned on appeal by the Oberlandesgericht Cologne. The Bundesgerichthof has now sided with Lindt and dismissed Haribo's appeal against the Cologne decision.

The BGH held that a similarity between a word mark and a three dimensional shape can only result from a similarity in meaning ("Ähnlichkeit im Bedeutungsgehalt"). Only the word mark and the allegedly infringing shape was to be compared, but not the allegedly infringing shape and the shape of the products which were sold under the word mark GOLDBEAR. In other words, you are not to do what so many media outlets did: compare the shape of a HARIBO bear with the shape of Lindt's chocolate bear, because basis for the suit was the word mark (and the figurative 2-D mark, depicted below left).

Haribo's figurative mark on the right

A similarity in meaning requires that the word mark is the obvious and natural designation of the shape. A strict standard applied, as otherwise, the word mark would monopolize a whole class of goods.

In the case at hand, there was no similarity of meaning. The Lindt chocolate bear was not most obviously and naturally referred to as GOLDBEAR, but could at least as obviously be referred to as "teddy", "chocolate bear" or "chocolate teddy". Haribo could not base its claims on its word mark GOLD-TEDDY, as it had only filed this mark after it had known that Lindt was bringing its chocolate bear to the market, and use of this mark against Lindt was unfair (wettbewerbswidrige Behinderung).

The figurative two-dimensional "bear" mark was not similar to Lindt's golden teddy bear, either. Finally, Haribo's unfair competition law claims failed for lack of similarity between the shape of its Haribo bears (now you can compare them) and Lindt's foil wrapped bear.

BGH press release of 23 September 2015 (grounds not yet available)