To celebrate the year of the Rabbit that in China is going to initiate soon, we have collected several cases all relating to the famous Golden Bunny of Lindt & Sprüngli. Despite its unoffensive, cute and delicious appearance, the Lindt' Bunny is tiger at IP protection!
Lindt & Sprüngli has been selling a milk chocolate bunny wrapped in gold-coloured foil with a red ribbon and a bell around its neck since 1952. It had registered two 3D trademarks for the product in Switzerland, one in black and white and the other in gold, brown, red.
But is this trademark valid all over the world? Apparently, there are some difficulties for the Swiss chocolatier to be recognized overall as the sole producer of original golden bunnies.
Nevertheless, Lindt is very keen to keep fighting for the protection of its iconic Bunny.
The last fight dates back to 2018, when discount supermarket Lidl started producing and selling a golden foil-wrapped chocolate bunny. Soon after, Lindt & Sprüngli sued Lidl for selling what the Swiss confectioner felt looking very similar to its own product.
With Judgment of 30 August 2022 the Swiss Federal Court has fully granted Lindt & Sprüngli's injunction against Lidl and has prohibited Lidl from producing and distributing copies of the Lindt Gold Bunny. This Judgment implies that Lidl is no longer allowed to sell Gold Bunny look-alikes in Switzerland and must destroy any remaining stock.
The Swiss federal supreme court ruled that the Lindt Gold Bunny is a valid registered "shape" trademark. As such, other companies can now be barred from replicating this shape when selling chocolate products in Switzerland.
But this is not the first time the Lindt bunny has went to the court claiming protection for its golden bunny, and not always with success.
Heilemann, a competitor in Germany, started selling golden bunnies in 2018 pushing the Swiss chocolatier to sue for trademark infringement.
Lindt's strategy was slightly different in this case, focusing on protecting the colour of the packaging rather than its shape. It claimed that the specific golden shade of the foil wrapping is distinctive enough to be protected as a trademark with respect to chocolate bunnies.
The German court agreed, relying on a consumer survey to which 70% of respondents said the golden shade in question called to mind Lindt's products.
The Austrian company Hauswirth was first sued by Lindt 2004. After bouncing around the lower courts ever since, the case was referred to the European Court of Justice in 2012. Hauswirth lost the battle and had to stop making chocolate Easter bunnies that looked like those made by Lindt.
Back in 2012, the European Court refused the request by Lidl to register it as a 3D trademark, ruling that Lindt & Sprüngli could not trademark its gold-foil wrapped Easter bunny chocolates, which are iconic in many countries – but not in all countries.
The German Riegelein company also made gold-wrapped bunnies, and in 2013 the case made it to the European court – where Lindt eventually lost. Rabbits, in fact, were part of the typical range of shapes of chocolate products, the judges had judged in relation to the 3D mark sought, especially as an Easter bunny. And the elements of the mark applied for (shape, gold foil and red ribbon with bells) could not give the mark any distinctive character.
In August 2020, Lindt tried in vain to protect the gold of the golden Easter bunny as a color mark. The gold color shown on the packaging foil of the chocolate bunnies is so well known through years of intensive advertising and use that this gold color is generally associated with the Lindt Golden bunny.
The Regional Court Munich admitted that abstract color trademarks can be protected as usage trademarks if they have gained recognition in the market.
However, to the extent that a trade acceptance of an abstract color mark has been assumed in the case law up to now, these were cases in which the companies have used a certain color as a corporate color for various products of the goods or service sector for which color mark protection was claimed and not only for a specific product.
This decision was overruled, though, in 2021: The German Federal Court of Justice (BGH) has ruled that the colour gold of the famous "Lindt Gold Bunny" enjoys trademark protection acquired by use due to the reputation it enjoys with the public (decision I ZR 139/20).
The decision of the German BGH is an important milestone in the trademark infringement proceedings initiated by Lindt & Sprüngli against a competitor who marketed chocolate bunnies in a packaging in a golden colour similar to the colour of the "Lindt Gold Bunny".
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