The Federal Court of Justice of Germany (BGH) ruled that marketing by the company Lindt of chocolate teddy bears wrapped in golden foil and with a red ribbon tied around the neck did not constitute an infringement of the rights to trademarks “Goldbären”, Goldbär” and “Gold-Teddy”, registered for the company Haribo – manufacturer of jelly “Golden teddy bears”. Also it is not a slavish imitation of products.
Haribo demanded that sales of its competitor’s products be stopped, information be given on sales of these goods, the goods produced be destroyed and amount of damage be determined that resulted from the imputed infringement.
The Court found that in this case the rights to any of the trademarks cited by the Plaintiff had not been infringed. There is no doubt that the marks „Goldbär” and „Goldbären” are reputable trademarks in the territory of Germany, and the products of both parties are similar to a certain extent. However, the object of comparison was the registered word trademark on one hand, and on the other the three-dimensional shape of a chocolate teddy bear which by the manufacturer was called “Lindt-Teddy”. The name “golden teddy bear” is one of the names that may be used with reference to this product. Therefore, in this case talking about an infringement of rights to the word trademark is out of the question.
In the opinion of the BGH, also the rights to a graphic trademark depicting a standing teddy bear have not been infringed because there is no visual similarity to a sitting chocolate teddy bear. As regards the trademark “Gold Teddy” which was registered after information about intended sale of Lindt products had been obtained, BGH found that assertion of rights under this mark would have been an unlawful limitation of Lindt’s activity within the meaning of the German act on combating unfair competition (UWG).
Moreover, BGH found that in this case the act of unfair competition had not been committed, as provided for in §4 subsection 9 of UWG, consisting in unlawful imitation of the competitor’s products. There is no similarity between the jelly and chocolate teddy bears that would justify the charge of slavish imitation.
- judgment of the Federal Court of Justice of 23 September 2015, file reference I ZR 105/14