The Bundesgerichtshof (BGH) – Germany’s Federal Supreme Court – ruled on July 29, 2021 that the shade of gold used by a particular manufacturer for its chocolate bunnies enjoys trademark protection (case no.: I ZR 139/20).
The manufacturer’s chocolate bunny wrapped in golden foil has been a staple on supermarket shelves in the weeks leading up to Easter for decades and is well recognized by consumers. A survey conducted by the manufacturer found that 70 percent of respondents associate the golden color of the foil with the company. We at the commercial law firm MTR Rechtsanwälte can report that the BGH has since ruled that this particular shade of color enjoys trademark protection due to how readily consumers associate it with the manufacturer in question. In doing so, the BGH overturned a ruling of the Oberlandesgericht (OLG) München, the Higher Regional Court of Munich.
Since the golden chocolate bunny has been sold since the beginning of the 1950s, the manufacturer believes that it is the owner of a trademark acquired through use of this particular shade of golden color, which is why it considered its trademark rights to have been infringed when it came across a competitor marketing its own golden chocolate bunny in 2018.
The manufacturer’s lawsuit was nonetheless ultimately dismissed by the Higher Regional Court of Munich, which held that the long-standing use of this particular shade of color had yet to give rise to any rights under trademark law. According to the Court, the color had not acquired a reputation for being associated with the chocolate bunnies and hence the plaintiff was not the owner of a trademark acquired through use pursuant to Section 4 No. 2 of the German Trademark Act [Markengesetz, MarkenG] (case no.: 29 U 6389/19).
However, having concluded that the plaintiff had in fact successfully made the case that the golden color of the chocolate bunny had acquired market recognition, the BGH took a different view and granted the plaintiff's appeal, noting that according to the survey presented in court the degree of association was 70 percent, substantially higher than the required 50 percent.
The Court went on to state that the color trademark need not necessarily have been used for all or many of the company's products as a kind of "house color" in order for it to acquire a reputation. Other design features were also found not to preclude the color having acquired a reputation; what is important according to the BGH is that the target consumer audience see an indication of origin in the use of this particular shade of gold for chocolate bunnies even if it is featured together with these other design elements.
Whether the competitor in question has infringed the manufacturer’s trademark rights with its chocolate bunny in golden foil must now be adjudicated by the Higher Regional Court of Munich.
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