Lindt Bear does not infringe the Haribo trademark

The BGH has ruled that there is no similarity between the "Lindt-Teddy" and the word mark "Goldbär".

The manufacturers Lindt and Haribo have been in dispute for some time over the infringement of trademark rights. Specifically, the dispute concerned the word marks “Goldbären”, “Goldbär” and “Gold-Teddy” registered by Haribo for sugar confectionery. The corresponding fruit gum products are well known to everyone.

Lindt also sells chocolate products, including a chocolate figure wrapped in gold foil in the shape of a sitting bear with a red neck ribbon – the so-called “Lindt Teddy”.

Haribo has now demanded that Lindt cease and desist from selling the “Lindt Teddy”. In the opinion of the Bonn-based company, the challenged figures infringed its registered trademarks and constituted an unfair imitation of its gummy bears.

After Haribo was successful with this claim at first instance, the court of appeal amended the judgment and dismissed the claim. The BGH (judgment of 23.09.2015, case no. I ZR 105/14) essentially rejected the appeal against this decision according to the press release of 23.09.2015.

No likelihood of confusion due to lack of similarity between the Haribo and Lindt trademarks

The court does not see Lindt’s actions as an infringement of trademark rights pursuant to Section 14 para. 2 No. 2 and 3 MarkenG. The court based this on the lack of similarity between the Haribo trademarks and the challenged product designs.

The special legal feature of these proceedings was that a word mark and a three-dimensional product design faced each other. This means that – unlike in the case of opposing word marks – a similarity of signs cannot be inferred from a similarity in the sound or image of the signs. Consequently, the shape of the products (here the gummy bears) is not to be included in the comparison. The similarity must result exclusively from the semantic content.

Such similarity is a prerequisite,

that the word mark is the obvious, informal and exhaustive designation of the three-dimensional design from the point of view of the targeted consumers.

Strict requirements for word mark vs. product design

In order to prevent a possible monopolization of product designs, strict requirements must be placed on the assumption of similarity of signs. If these requirements were not applied so strictly, the owner of a word mark could possibly prohibit the sale of all three-dimensional designs that are similar to the meaning of the word mark. Therefore, according to the BGH, it should not be sufficient that the word mark is only one of several obvious designations of the product shape.

Applying these conditions, the court decided that there was no similarity of meaning between the signs in the present case:

The terms “Goldbären” or “Goldbär” are not the only possible names for Lindt products. Other names such as “Teddy”, “Chocolate Bear” or “Chocolate Teddy” are just as obvious.

Reliance on late registered trademark inadmissible

The company cannot rely on the word mark “Gold-Teddy”, also registered by Haribo, in these proceedings, as this would constitute an anti-competitive obstruction within the meaning of Section 4 No. 10 UWG. This trademark was only applied for registration in the trademark register after the intention to sell was known.

No imitation under competition law

According to the BGH, Haribo is also not entitled to any competition law claims against the competitor. The challenged product shapes were not imitations of the plaintiff’s products within the meaning of Section 4 No. 9 UWG. There was a lack of sufficient similarity between the gummy bears and the chocolate figures.

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