Lindt’s Golden Goose Bunny is trademark protected
By Mercedes Bullrich and Antonella Balbo.
For the German Federal Court, if there is a chocolate bunny whose golden aluminum wrapping is emblematic, that is the case of Lindt & Sprüngli’s chocolate. The famous Lindt chocolate bunny has been sold with its golden aluminum wrapping since the dawn of its existence, in 1952, and the company of Swiss origin has used the actual golden color as from 1994, until nowadays.
On 29 July 2021, the Federal Court of Justice backed the famous chocolatier, when it ruled that the golden color from the aluminum wrapping on Lindt & Sprüngli’s chocolate, had acquired trademark protection through its reputation.
In 2018, it caught the attention of the swiss company that a competitor, the German chocolatier Heilemann, was selling a chocolate bunny wrapped in golden aluminum, just like their traditional packaging. Lindt initiated legal actions, claiming that their long-term use of the golden color had enabled them to acquire trademark rights over such color, and that the unauthorized use done by its rival, was causing confusion within the public consumer.
Even though the State Court of Munich ruled against Lindt, the Federal Court of Justice overruled the decision on the grounds that the reputation and notoriety acquired by Lindt’s product were sufficient arguments to prevent Heilemann from continuing to sell chocolate bunnies in golden wrapping. In so deciding, the Court considered that there was a clear intention from Heilemann to cause confusion in consumers, resulting in illegal diversion of clientele and mistaken association with the famous Lindt bunnies.
In addition, the Court cited a survey presented by the swiss company, which showed that 70% of respondents associated the golden color with the company’s product. Another factor taken into account by the Court was the fact that Lindt’s Easter Bunny is a best-seller in Germany, with a market presence of 40% in 2017.
It is clear that the distinctive capacity is the decisive element in determining whether a sign deserves protection as a trademark. Although certain distinctive signs are expressly recognized in Argentina, such as color combinations applied in particular places of a product, the legislator did not grant trademark protection to a single color applied to a product1. However, it should be noted that said provision of the Trademark Act refers exclusively to the color applied to products, omitting any reference to one color applied on packagings, labels or product wrappings.
Nevertheless, whether a single color can constitute a trademark has been subject of debate before, arriving to the same conclusion reached by American case law and doctrine for which, in order for a color to acquire trademark protection, it is necessary for it to have achieved “secondary meaning” with respect to a particular product or service. This “secondary meaning”, better known as “supervening distinctive capacity”, can confer distinctive capacity to a sign as a result of its use, even if it born from its color.
Thus said, the protection of colors as a distinctive element has evolved over time. In Argentina, the National Court of Appeals in the Federal Civil and Commercial matters, when ruling in the case “Pfizer, Inc. v. Microsules y Bernabó S.A.”, admitted the registration of a trademark consisting in a particular shape and single color to recognize a famous pill to combat erectile dysfunction. Although the Court of Appeals understood that in said case a certain combination of color and shape was to be protected, when referring to the blue color of the pill, it stated that “its trademark content is evident from the great diffusion of the product (widely proven in the case with newspaper clippings that refer to the ‘blue pill’ and its therapeutic properties…), it is pertinent to conclude that its distinction is inevitable once extracted from the box and opened the blister in which the pill is wrapped 2.
Therefore, those signs -including shape and color-, that have acquired a “secondary meaning” or distinctive capacity, are considered exempted from the exclusions established by the Trademark Act in terms of distinctiveness, as it is the case of Lindt’s golden goose bunny. Thus, we can state that colors are not necessarily available for all of us to use, and that, even if not registered as trademarks, colors that companies choose to distinguish their products or services can also be protected as such.
For further information please contact: mbullrich@ojambf.com.
