Eye and mouth – A conflict between shape and words

This is a Christmas gift to the IP community consisting of design fans and connoisseurs. A trademark case that has some relation to design law: Can a word mark be infringed by a three-dimensional configuration which some may describe or call by using a word which is the same as the word mark?

To bear or not to bear?

The Cologne District Court, in a decision of 18 December 2012 widely reported in the German press (full text in German to be found here), held that a chocolate bear wrapped in a golden foil, made by Chocoladefabriken Lindt & Sprüngli (not to be confused with the LINDT Easter bunny previously the subject of many decisions, inter alia the following one by the ECJ), constituted an infringement of the German word mark No 974380 “Goldbären” (= “golden bears”) registered for HARIBO, a well-known Bonn-based producer of jelly candies (but not of chocolates).  The Court found the accused golden-bear-like shape (actually more like a teddy bear than a regular bear) to be the “visual representation” of the word “Goldbären”.  Here is the summary provided by the Court’s press release (in German).

Actually, there is no precedent that we are aware of covering this particular conflict. The parties, well aware of that and even ahead of any appeal decision, agreed to pursue their case up to the German Supreme Court, where it is unlikely to arrive before some time in 2013 or 2014, from where it may well end up before the European Court of Justice.

Interestingly, the Cologne District Court confirmed conceptual identity of signs but neither applied nor even discussed the ECJ's “Thomson Life” test (i.e., any independent distinctive role of the earlier mark within the accused shape) nor any potential neutralization of that conceptual identity due to oral and/or visual dissimilarities, which would have appeared to be necessary in view of the well-known character of the LINDT word and logo.  Therefore, we consider it to be more likely than not that the decision will not withstand the scrutiny of the Cologne Appeal Court.