Who owns the "Goldbär" - Haribo, Lindt or both?

In its ruling dated 23 September 2015, the Federal Court of Justice (Bundesgerichtshof – “BGH”) held that Lindt's chocolate bear in gold foil does not infringe on Haribo's word mark "Goldbären". Thus, Haribo cannot prevent the chocolate manufacturer Lindt from marketing its chocolate bears in gold foil in Germany.

Haribo had held a different view, arguing that its famous word marks "Goldbären", "Goldbär" and "Gold-Teddy" were infringed upon by the product presentation of the chocolate bear in gold foil with the red collar. Whereas the Cologne Regional Court (Landgericht – “LG”) ruled in favor of Haribo, the Higher Regional Court (Oberlandesgericht – “OLG”) decided against a trademark infringement, a position which the BGH confirmed.

From a legal perspective, the case deals with the question of whether a three-dimensional product presentation can infringe on a word mark. For this to be the case, the three-dimensional product design would have to either sound or look similar to the word mark or have a similar semantic content. The BGH first stated that any similarity of sound or look can be precluded when dealing with a word mark and a product design. In its opinion, any similarity between the product design of the chocolate bear in gold foil and the word mark "Goldbären" can, if at all, exist in terms of semantic content. For there to be a similarity in meaning between the word "Goldbären" (gold bears) and the product presentation, the word mark must be, from the perspective of the targeted consumers, the "obvious, uncontrived and exhaustive name" of the three-dimensional design. This is not the case in the present case, as there are other, equally obvious names for Lindt's chocolate bears, such as "Teddy", "Schokoladen-Bär" or "Schokoladen-Teddy" ("teddy", "chocolate bear" or "chocolate teddy").

Therefore, the BGH denied a sufficient similarity between the word mark "Goldbären" and the specific product presentation of Lindt's chocolate bear, including with regard to the Haribo trade mark "Goldbären". According to ECJ case law, when dealing with a well-known trade mark, a minor degree of similarity of the signs is already sufficient for the court to affirm a trade mark infringement if the average consumer "mentally associates" the signs with each other.

The BGH has decided in the interest of the trade mark industry, and this decision must be welcomed. Had the BGH affirmed a trade mark infringement, a manufacturer would be able to monopolize a variety of different product designs simply by registering one single word mark. Manufacturers of brand name products no longer have to fear that a competitor could prohibit the use of their specific product design on grounds of a word mark that only vaguely describes this product design. This would also run counter to the trade mark law principle that a right to a trade mark does not offer protection of the abstract concept of a sign ("Motivschutz") (e.g. protection of all conceivable representations of a "gold bear").