Registered color trademarks are the exotic ones among the types of trademarks. Usually, word marks, device marks or combinations of word and device are registered as trademarks. However, some companies dream of being able to claim a color for themselves. Competitors would then hardly be able to use this color for the same or similar trademarks without violating the monopoly.
Based on the competitor's color scheme
In practice, we often receive inquiries of the kind that a client thinks that a competitor is using a color scheme similar to theirs, so that the companies could be confused. In this subjective view, it is often overlooked that, according to case law, customers of goods or services are accustomed to the limited color spectrum and therefore would not confuse different companies with the same color scheme.
The Gold Bunny
Nevertheless, the Lindt & Sprüngli group has now managed to convince the Federal Court of Justice of the merits of its gold bunny color scheme. It has been offered in Germany in golden foil since 1952 and in its current gold tone since 1994. Incidentally, it was learned during the trial that more than 500 million gold bunnies have been sold in Germany over the last 30 years, making the "Lindt Gold Bunny" the leader among Easter bunnies. No other bunny is sold more often, with a market share of over 40% in 2017.
The present case was not about the registration of a color mark, but the group of companies took action against another producer of seated chocolate bunnies in a gold-colored foil. A registered color mark for the Lindt Gold Bunny did not exist. Rather, it was about another exotic aspect of trademark law, the so-called "trade mark acquired through use".
Trade Mark by Use
Trademarks can arise not only through registration. If you manage to become extremely well known among customers, the law grants trademark protection purely through the use of the trademark, which even goes further than that of a simple registered trademark.
The requirements for a trademark acquired through use and a color trademark overlap in the case of the chocolate bunnies. A trademark consisting of the protection of a color is only granted if this color is so exceptionally well known that the customers think of the manufacturer or its product purely when they see the color.
Market research
In court, this must be proven by the claimant. They need a large wallet, because the proof must ultimately be provided by means of a market survey. For this, the customer groups are surveyed by neutral market research institutes. This must, of course, be done in a statistically correct manner, so that you have to survey people in the three to four-digit range. Anyone who has ever been approached in a city center or on the phone about taking part in a survey can appreciate how difficult it is. Most of those approached have no desire to participate. The procedure is correspondingly time-consuming, especially since a telephone survey is out of the question from the outset when it comes to the color of a gold bunny. The costs of the proof for the claimant, which he must advance, are thus in the five-digit range.
The Lindt & Sprüngli group initially had problems in the process. The court of appeal, the Higher Regional Court of Munich, dismissed the action. It was not convinced that the gold tone was sufficiently associated with the Lindt gold bunny by customers.
In its judgment of July 29, 2021 - I ZR 139/20, the Federal Court of Justice has now allowed the plaintiffs' appeal and referred the case back to the court of appeal for a new hearing and decision.
Previously, the Federal Court of Justice had avoided making a clear statement as to when the reputation among customers, the so-called market reputation, is sufficiently high to derive a trademark right from it. Now it is clear: at least 50% is sufficient.
It has to be 50% awareness.
According to the market survey presented, it had been proven that the degree of association of the gold color used for the foil of the "Lindt Gold Bunny" in connection with chocolate bunnies from the plaintiffs' company was 70%. This significantly exceeded the required threshold of 50%.
Moreover, previous cases usually involved a color for the company itself, such as the red of the savings banks or the magenta of Deutsche Telekom. Now, however, the Federal Court of Justice has ruled that the acquisition of reputation does not require that the color be used as a "house color" for all or many of the company's products.
The Lindt & Sprüngli group has now reached the first stage: its gold tone for the Lindt Gold Bunny is protected by a trademark.
The case goes back to the Higher Regional Court
The specific case will now be continued at the Higher Regional Court, because there is now a further question to be clarified under trademark law: If the competitor uses the gold tone for other chocolate bunnies than the well-known Lindt gold bunny, do customers then think that it is a product of the Lindt & Sprüngli group? It therefore remains to be clarified whether consumers really do confuse the two. The Higher Regional Court did not address this factual question – for which a survey would probably be necessary again – as it is only permitted to rule on legal issues. Therefore, the BGH is now sending the case back to the OLG. The latter will have to clarify whether the defendant has violated the plaintiffs' trademark by using the gold color of the "Lindt Gold Bunny" to market its chocolate bunnies wrapped in gold-colored foil.
Lower courts:
Munich Regional Court – judgment dated October 15, 2019 – 33 O 13884/18
Munich Higher Regional Court - judgment of July 30, 2020 - 29 U 6389/19
The statements represent initial information that was current for the law applicable in Germany at the time of initial publication. The legal situation may have changed since then. Furthermore, the information provided cannot replace individual advice on a specific matter. Please contact us for this purpose.