It is well-established that a shape or colour alone can function as a trade mark, that is, a badge of origin indicating to consumers the source of the relevant goods or services. However, in practice, achieving the level of ubiquity required to be granted such a trade mark registration can be difficult. It is also difficult in practice to separate out one’s unregistered reputational rights in a colour, shape or any other single element alone, given that such elements will typically be used in conjunction with multiple other indicia of origin, including the more obvious trade mark candidates of words and logos.
Nowhere has this been more acutely felt than in the never-ending battles of confectionary companies around the world seeking to protect whichever specific feature they think makes their product stand out from the crowd. Trade mark lawyers the world over cannot look at the specific shade of purple covering a block of Cadbury chocolate without thinking of Cadbury’s long and bitter colour trade mark battle, or hear the snapping of a Kit Kat bar without remembering Nestlé’s highly disputed shape mark.
The latest foray down this well-trodden path comes courtesy of the iconic golden foil-wrapped Lindt chocolate bunny, which appears every year on supermarket shelves (seemingly as soon as the Christmas decorations have been taken down), the tiny bell on its coloured ribbon collar ringing out to tempt would-be dieters away from their well-intentioned New Year goals.
Over the years, Swiss chocolatier Lindt & Sprungli has explored many angles to secure and expand its trade mark protection for its chocolate bunny product around the world. In the EU, these attempts have generally been in vain, with Courts declining to grant registered protection for the 3D shape of Lindt’s seated bunny and its packaging. The tide may be turning for Lindt, however, with a German Court, earlier this year, handing down an important win over German confectionary company, Heilemann, in relation to the appearance of its famous golden bunny.
Back in 2018, Lindt became aware of the sale by Heilemann of a gold-foil wrapped chocolate in the shape of a seated bunny, and brought infringement proceedings in the District Court in Munich. As noted above, Lindt does not have registered trade mark protection in the EU for its golden bunny shape and colour. It was instead forced to rely upon an alternative provision of the German Trademark Act, which grants protection for unregistered trade marks which “have been used in trade, insofar as the marks have acquired public recognition within the affected trade circles”.
In the first instance, Lindt was successful, with the Court finding that Lindt had established that the gold colour used on the foil of its various bunny products was recognised by consumers as an independent indicator of origin. It held that the golden hue alone had acquired a sufficient reputation among the relevant members of the public to satisfy the test for unregistered trade mark protection under German law.
However, Lindt’s case hopped backwards when the first instance decision was appealed to the Higher District Court of Munich, which found that the gold colouring on Lindt’s range did not act as an independent indicator of origin, and that the fame of one specific Lindt product, the Goldhase bunny, did not extend to every gold-wrapped bunny product in Lindt’s range. The Higher District Court recognised the inherent difficulty in separating reputation in a colour alone, from reputation in that colour as applied to a specific shape and/or combined with other design elements, which have their own distinctiveness and recognition among consumers.
But in July this year, the case took yet another turn in the German Federal Supreme Court, which overturned the decision of the Higher District Court regarding Lindt’s unregistered trade mark rights.
The Federal Supreme Court’s findings
A press release issued by the Federal Supreme Court following the decision indicated that the Court had taken particular account of the results of a survey submitted by Lindt in support of its case. This survey found that 70% of respondents recognised the specific golden shade of the foil wrapping as an indicator of origin for Lindt products, far exceeding the threshold of 50% required to demonstrate the requisite degree of recognition.
The Court found that the fact that the gold colour was not used on other Lindt products as a ‘house colour’ (unlike Cadbury’s purple shade, for example) did not preclude it from being sufficiently recognisable to warrant trade mark protection. It also did not matter that the colour element was used by Lindt in conjunction with other design elements such as the shape of the seated bunny, the red collar with the golden bell, and the words “Lindt Goldhase”. Finally, the Court noted that the question of whether third parties also used the same shade of gold in the wrapping of their own competitor bunnies was irrelevant for the purpose of the threshold question of the existence of unregistered trade mark rights in the gold colour tone. This will however be a relevant consideration in determining whether there is a likelihood of consumer confusion for the purposes of determining whether Heilemann has infringed Lindt’s unregistered trade mark rights.
The fact that three German Courts could come to differing conclusions on the same legal tests when presented with the same set of facts underscores that the question of reputational rights in a single element of a product’s overall get-up is a vexed one, often without a straightforward answer.
The battle may have been won, but the war wages on, as the matter has been sent back down to the Higher District to consider the separate question of trade mark infringement, so it remains to be seen whether Lindt’s golden bunny can hop all the way to victory.
The authors thank Vicky Zhang, Associate, for her contribution in researching this blog.
 By way of example, a recent search of the Trade Marks Register indicates that there are 359 current colour trade mark registrations on the Australian Register, out of a total 1,419 applications filed, and 1,380 shape mark registrations out of a total 4,660 applications filed. This demonstrates the difficulty in successfully registering such marks.
 In 2004, Cadbury filed a UK trade mark application for its signature Pantone 2685C purple colour, which covers the packaging and wrapping of many of the confectionary giant’s goods. Nestlé opposed the application, starting a lengthy dispute that traversed through the UK High Court, resulting in a final ruling from the UK Court of Appeal in 2013 against Cadbury ( EWCA Civ 1174). It was found that Cadbury’s broad description of the mark meant it could not satisfy the requirement of being a single clear sign, but rather, encompassed a multitude of visual forms that lacked specificity and precision.
 In 2002, Nestlé filed an EU trade mark application for the 3D ‘four-fingered’ shape of its Kit Kat bar, which was successfully registered in 2006. Cadbury then sought to invalidate the mark and a decade-long dispute ensued, with the Court of Justice of the European Union ultimately handing down judgment against Nestlé in 2018 (Joined Cases C‑84/17 P, C‑85/17 P and C‑95/17 P). It was found that Nestlé failed to prove its shape mark had acquired distinctive character throughout the EU. The same conclusion was reached in the UK by the Court of Appeal for Nestlé’s UK shape mark but on different grounds; the shape of the chocolate bar lacked distinctiveness as it could not be relied upon by consumers to signify the origin of the goods ( EWCA Civ 358). For more information, please see our previous global publication on this matter at the following link: https://www.nortonrosefulbright.com/en/knowledge/publications/941f774f/showing-acquired-distinctiveness-of-kit-kat-4-fingers-shape-trade-mark-throughout-the-eu.
 Lindt & Spruengli had successfully obtained registered trade marks for the shape and get up of its chocolate bunny in a number of EU Member States’ national trade mark offices, including Germany. However, this was not enough for Lindt to be granted trade mark protection throughout the EU, as the Court of Justice of the European Union found in 2012 that its shape mark lacked distinctiveness (Case C-98/11P).