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Trademark collision of a figurative mark with a word mark

Judgment of September 23, 2015 - I ZR 105/14

Lindt wins with his chocolate gold bear in the dispute with Haribo with his gummy bears over the question of the violation of the gold bear brand.

Press release of the BGH:

The First Civil Senate of the Federal Court of Justice, which is responsible for trademark and competition law, among other things, decided today that Lindt's distribution of a chocolate figure in the shape of a bear wrapped in gold foil and provided with a red collar neither infringes the Haribo gold bear brands nor any unfair imitation of them Represents fruit gum products.

The plaintiff produces and sells fruit gum products. The products she manufactures include so-called "gummy bears", which she calls "GOLD BEARS". She is the owner of the word marks "Goldbären", "Goldbär" and "Gold-Teddy" registered for sugar confectionery. The defendants sell chocolate products. These include the "Lindt Gold Bunny" and, since 2011, a chocolate figure also wrapped in gold foil in the form of a sitting bear with a red neck bow, which they call "Lindt Teddy".

The plaintiff demands that the defendants cease to sell the bear-shaped chocolate figures wrapped in gold foil and asserts claims for information, destruction and determination of damages. She is of the opinion that the attacked characters violate their trademarks and represent an unfair imitation of their gummy bears.

The lawsuit was successful in the first instance. The higher regional court changed the first instance judgment and dismissed the complaint. The Federal Court of Justice has essentially rejected the appeal against the appeal judgment.

The claimant does not have any claims for infringement of her trademark rights in accordance with Section 14, Paragraph 2, No. 2 and 3 of the Trademark Act *. It is true that the plaintiff's brands "Goldbär" and "Goldbären" are well-known brands in Germany, and the opposing goods of the parties are very similar. However, there is no similarity between the plaintiff's brands and the defendant's contested product designs for the assumption of a likelihood of confusion or a conceptual link.

If - as in the case at issue - a word mark and a three-dimensional product design are opposed to each other, the similarity of the signs cannot result from a similarity in the sound or image of the signs, but solely from a similarity in the meaning content. Only the word mark and the product form complained of are to be compared. In the comparison of signs, however, the shape of the products here, the plaintiff's gummy bears, for which the word mark is used, should not be included. A similarity in the meaning presupposes that the word mark is the obvious, informal and exhaustive name of the three-dimensional design from the point of view of the addressed consumer. In principle, strict requirements must be placed on the assumption of the similarity of the signs, because otherwise there would be the risk that the similarity of signs in the sense of a word mark with a three-dimensional product form results in an extensive monopoly of product designs, as is the case with a figurative mark or a three-dimensional product shape mark with the a certain product form must be specified cannot be achieved. It is not sufficient that the word mark is just one of several obvious names for the product form.

In the event of a dispute, there is no similarity in the meaning of the signs. For the designation of Lindt products, not only the words "gold bears" or "gold bears" come into consideration. Other names such as "teddy", "chocolate bear" or "chocolate teddy" are just as obvious. With regard to another figurative mark of the plaintiff, which shows a standing bear figure, there is also a lack of sufficient similarity with the chocolate figures of the defendant wrapped in gold foil. The plaintiff cannot refer to the word mark "Gold-Teddy", since the assertion of this mark constitutes an anti-competitive obstacle for the defendant within the meaning of § 4 No. 10 UWG **. The plaintiff had this trademark entered in the trademark register only after it had become aware of the defendant's intention to sell.

The applicant also does not have any claims under competition law. The contested product forms are not imitations of the plaintiff's products within the meaning of Section 4 No. 9 UWG **, because there is no sufficient similarity between the plaintiff's gummy bears and the defendant's chocolate figures.