Trade mark cases in Germany: colours, sweets and animals have their day in court

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Germany’s courts, including at the highest level, have made some interesting decisions in trade mark cases over the past two years, concerning questions over slogans, shape marks and colours among other issues. Among the most notable cases are: a dispute over whether the slogan “for you” is descriptive for goods in the health and food sector; two cases concerning the colour yellow for dictionaries between Langenscheidt sued Rosetta Stone; the Nivea-Blue case, which addressed the level of recognition required to show acquired distinctiveness; a dispute between Haribo and Lindt&Sprüngli over bear-shaped sweets, which pitted a word mark against a 3D object; the Ludwig Schokolade case concerning three-dimensional trade marks for chocolate; and a clash between Puma and Pudel, which involved a parody defence.

In the "for you" case (judgment of July 7 2014, Case I ZB 81/13) the Federal Supreme Court had to decide whether or not the slogan "for you" is descriptive for goods in the health and food sector and, therefore, lacks distinctiveness and has to be cancelled.

After the German Patent and Trade mark Office had rejected the request for cancellation, the Federal Patent Court had the trade mark cancelled, stating that the mark consists of simple English words which are easily understandable by the relevant consumer. These words would be understood as addressing the consumer directly and giving him a feeling of individuality. This is why the slogan "for you" is not more than just a promotional statement and could not identify origin.

The Federal Supreme Court confirmed that the mark "for you" is composed of simple English words. However, contrary to the finding of the Patent Court it stated that with respect to the concerned goods at hand, namely meat, eggs, bread and others, the slogan "for you" is not understood as an indication that the goods are adapted to the individual needs of the consumer, as the actual goods do not per se allow any individual adjustment to the consumer´s personal needs.

Furthermore, it stated that it could not be assumed that "for you" is just an advertising slogan. The Patent Court did not make any findings that the consumer would understand the slogan "for you" exclusively as a sales appeal without any indication of origin. A possible advertising function of the mark does not preclude it having a distinctive character.

Since the 1950s the German publisher Langenscheidt has distributed dictionaries in a yellow colour. It is the owner of the illustrated German colour mark "yellow".

The colour mark was registered on the basis of acquired secondary meaning for the goods "printed bilingual dictionaries" in class 16.

In Case I ZB 61/13 Langenscheidt-Gelb (in English Langenscheidt-Yellow) the US company Rosetta Stone filed a cancellation request against Langenscheidt´s registered colour mark. Rosetta Stone argued that the conditions for an acquired secondary meaning are not met and the colour mark is devoid of a distinctive character. The cancellation request had been rejected by the German Trade mark and Patent Office as well as by the Federal Patent Court.

In its decision of October 23 2014, however, the German Federal Supreme Court confirmed the distinctive character of the trade mark. The Court stated that colour trade marks do not possess an inherent distinctive character. However, in the relevant industrial sector the consumer will see a colour as an indication of origin, especially in the case at hand in which the colour mark has been extensively used for many years (since 1986) and Langenscheidt has established itself as a market leader (with a market share of over 60%). Thus, the yellow colour is an indication of origin.

This finding is not called into question by the fact that the colour trade mark has only been used with further elements. In such cases it is, however, necessary to conduct a survey in which the colour has to be shown on its own without any further elements, because the colour itself has to serve as an indication of origin in the eyes of the consumer. This was so in the present case.

The Court also stated in its decision that there are no fixed percentages that have to be met for claiming acquired secondary meaning. The minimum limit is, however, 50%.

In Case I ZR 228/12 Gelbe Wörterbücher (Yellow Dictionaries) Langenscheidt sued Rosetta Stone for infringement of its yellow colour mark. Rosetta Stone distributed a language-learning software using a yellow colour as shown in the illustration.

On September 18 2014 the German Federal Supreme Court confirmed the infringement based on the arguments that Rosetta Stone used its yellow colour as a trade mark and that a risk of confusion exists. The Court stated that the use as a trade mark can only be found in exceptional cases, because the public is not used to perceiving a single colour as an indication of origin. However, where the public got used to a certain practice in the field of industry, using a colour as an identifier, the single colour may serve as a trade mark. In the case at hand the German market for dictionaries was strongly influenced by the use of colours functioning as indicators of origin.

Furthermore, the goods "dictionaries" and "language-learning software" are highly similar. As regards the distinctiveness, the Court stated that the colour mark had achieved a high degree of awareness among the public due to its long term use (more than 50%). Moreover, the signs were considered to be highly similar. The Court took only the respective colour into account, even though both parties have used the colour with additional elements. Where consumers regard a colour used on a product packaging as a (secondary) sign and not as part of a combined sign, the colour has to be the basis of an isolated comparison of the similarity of the signs. The Court had noted the slightly different colour shades, but still found that the relevant public is unable to remember specific colour shades. Therefore, the colours were held to be highly similar. Overall, a likelihood of confusion could therefore not be excluded.

In Case I ZB 65/13 NIVEA-Blau (Nivea-Blue), a competitor of the German company Beiersdorf filed a cancellation request against the depicted colour mark "blue", protected for "skin and body care products" in class 3.

The German Patent and Trade mark Office granted the request for cancellation. The Federal Patent Court then confirmed the cancellation and rejected the appeal. It considered that the degree of public recognition of the mark, as evidenced by a survey, which showed a degree of recognition of 58%, was not sufficient. Rather, the degree of recognition for a single colour should be at least 75%.

In a decision on July 9 2015, the Federal Supreme Court annulled the decision and referred the case back to the Federal Patent Court stating that the Federal Patent Court erred in requiring a recognition of at least 75%. The Court decided that a degree of public recognition of above 50% was sufficient to show acquired distinctiveness (in line with the decision in the Langenscheidt-yellow case (see above)). In this respect it referred to the decision of the Court of Justice of the European Union in the case Sparkassen-Rot (Sparkassen-Red) in which the Court stated that no distinction should be made between different categories of marks regarding the requirements for showing acquired distinctiveness.

Case I ZR 105/14 concerned a collision between a word trade mark and a three-dimensional object. The parties are the well-known confectionery manufacturers Haribo and Lindt&Sprüngli.

Haribo, a German fruit gum manufacturer, produces and distributes various fruit gum products. These products also include fruit gums in bear-shape, so called "Goldbären" (translated as "gold bears"). Haribo is the owner of the German word trade marks Goldbären, Goldbär ("Gold Bear") and Gold-Teddy protected for the goods "confectionery". Haribo has sold its fruit gum bears since the 1960s and is extremely well known.

Lindt&Sprüngli, a Swiss chocolate manufacturer, sells the depicted Lindt Teddy, a sitting chocolate bear wrapped in a golden foil with a red ribbon around the neck and the "Lindt" logo on its stomach.

Haribo was of the opinion that Lindt´s chocolate teddy infringes its trade mark rights.

The action was – a bit surprisingly – successful at first instance. Lindt appealed the decision and the action was dismissed in second instance. The decision was appealed to the Federal Supreme Court, which on September 23 2015 confirmed the ruling of the court of second instance denying any likelihood of confusion. The Court mainly had to decide whether and how three-dimensional marks can be infringed by pure word marks. The Court decided that the word trade marks of Haribo are well-known in Germany and that the goods being compared are highly similar. However, the word marks of Haribo and the product shape of Lind&Sprüngli are not similar.

As regards the comparison between a word trade mark and a product shape, a similarity can only arise in conceptual aspects, but not in visual or aural aspects. In other words: the shape of the products for which the word trade marks are used (here Haribo bears) may not be taken into account. A similarity in conceptual aspects, however, presupposes that the word mark is the only and obvious reference perceived by the relevant customers when seeing the three-dimensional product shape. It is not sufficient when the word mark is only one out of various references for the concrete product shape. When comparing a word mark and a three-dimensional product shape strict criteria have to be applied in order to prevent trade mark owners from monopolising a broad range of product shapes by obtaining a word mark.

In the case at hand, the court held that the three-dimensional product shape of Lindt&Sprüngli cannot only be described as "Gold Bear", but rather also as "Teddy", "chocolate bear" and "chocolate teddy". The "Lindt-Teddy" was not obviously and naturally referred to as "Goldbär". Hence, the signs are not similar in conceptual aspects.

As a consequence, pure word marks will rarely be a risk for three-dimensional trade marks and shapes, especially when the product shape also possesses individual characteristics.

Ludwig Schokolade is owner of the depicted three-dimensional trade marks, the trade mark in the shape of an individual chocolate piece, a so-called Schogetten-Stück (Schogetten-piece) as well as the chocolate bar consisting of 18 individual pieces (3x6). Ludwig Schokolade has distributed its chocolate bar since 1962 in a typical rectangular 100g package under the name Schogetten. Each chocolate piece is adorned with a star located on its surface.

Schogetten-piece

chocolate bar

Ludwig Schokolade sued a competitor, who also distributed a 100g chocolate bar, consisting of 18 individual chocolate pieces as depicted in the illustration, for infringement of its three-dimensional trade marks.

The competitor sold its chocolate bars under the mark Baronette inter alia in the depicted packaging on which individual chocolate pieces were displayed.

In a judgment dated August 15 2014 (Case 6 U 9/14) the Higher Regional Court stated that with the individual piece, with the composition as a bar and with the two-dimensional use of the chocolate piece on the packaging the competitor infringed the three-dimensional trade mark (the Schogetten-piece) of Ludwig Schokolade. The relevant consumer will understand the Schogetten-piece as an indication of origin. A survey showed that more than 70% of the interviewees combine the chocolate piece with a certain undertaking. The fact that there is a star located on the surface of the Schogetten-piece is irrelevant, since the scope of protection of the trade mark is related to the three-dimensional shape of the piece as such.

Case I ZR 59/13 (judgment of the German Federal Supreme Court of April 2 2015) concerns a collision between the leading sports article manufacturer Puma, which is owner of the well-known German word device mark with the word element "Puma" combined with the outline of a jumping puma (as depicted).

Puma sued the owner of the younger German word device mark registration for the word element "Pudel" ("poodle") and the outline of a jumping poodle, for infringement of its Puma mark.

The Federal Court stated that the trade marks were only faintly similar. Although the signs were not similar enough to cause a likelihood of confusion, however, the other side had infringed the broader protection of the Puma mark enjoyed by virtue of its reputation. The other side was profiting from the similarity of both trade marks and gained attention for its products it would otherwise not have been able to attract. The Court was of the opinion that the other side had taken advantage of the distinctive character and reputation of Puma's trade mark, which afforded Puma a right to demand cancellation of the conflicting Pudel mark.

The other side tried to defend itself arguing that the use of the Pudel trade mark is subject to the fundamental right of freedom of art (parody). The Court stated that this right finds its limits in other conflicting fundamental rights, here the intellectual property rights of Puma. The Pudel trade mark lacks the critical dispute with the Puma mark necessary for a parody; instead the use of a Pudel was fuelled by commercial interests only. The trade mark is just a copy of the original and only transferred its typical design features to another kind of animal.

Till Lampel

Martina Pfaff

© 2016 Harmsen Utescher. Till Lampel is a partner and Martina Pfaff is an attorney-at-law with the firm, which is based in Hamburg, Germany