German retailer chain Lidl has been directed to halt sales and demolish all stocks of its golden chocolate bunnies according to a ruling made by the Swiss federal supreme court in late August this year.
The final verdict meant Swiss chocolatier Lindt & Sprüngli was awarded the legal protection of their shape trademark, The Lindt Gold Bunny, for it is recognised as a valid 3D trademark by the Swiss court.
Premium confectionery company Lindt crafted their well-known chocolate bunnies – made complete with gold foil packaging alongside a red ribbon and small bell adornment – 70 years ago in 1952. The product has evolved to become an Easter staple in many countries, and the company has since registered two shape trademarks for the product in Switzerland. The Lindt Gold Bunny is protected in various colours, including black, white, gold, brown and red.
Lindt’s acquisition of trademark protection over their bestselling Gold Bunny meant they took Lidl’s similarly designed chocolate bunnies seriously. Although the two products were not entirely identical, with Lindt’s bunny sporting a red ribbon and Lidl’s own sporting a yellow or green ribbon, Lindt argued there was great potential for confusion from a customer’s point-of-view. Lindt compounded their statement with consumer reports, with the majority citing the shape as an identifier of Lindt’s products.
By intellectual property law, a trademark is a sign to distinguish one product from another in the market. Lindt’s survey proved the distinctiveness of their bunny shaped products, but Lidl argued the shape of a bunny is not distinctive enough to qualify as a trademark. Although Lidl is accurate in stating the Gold Bunny does not necessarily possess a unique shape, the product however has established customer recognition through use, therefore granting Lindt protection over their shape trademarks.
The valid qualities to determine the trademark status of Lindt’s Gold Bunny has been a topic of contention for many years. Lindt has taken many competitors to court prior to Lindt, including Austrian chocolatier Hauswirth. Hauswirth presented the argument that gold foil wrapped chocolate bunnies were in production long before Lindt claimed Gold Bunnies as theirs. Lindt took Hauswirth to court in 2004 and the latter company was legally directed to stop production of their chocolate bunnies in 2011 by Vienna court.
Lindt applied for their 3D trademark in 2000 and protection was granted to the company in 2001. The outcome for Lindt’s lawsuit against Lidl gives weight to the protection of shape trademarks, particularly to trademarks established via consumer recognition.
Gaining trademark protection over the design of a product was always a difficult endeavour, as evidenced by trademark failures shared by multinationals Nestle over Kit Kat chocolate bars and Coca-Cola over coke shaped bottles. Recently, Christian Dior has been refused shape trademark protection over their famed Saddle bags, as the European court claims its shape as lacking distinctiveness.
As companies fight it out over product designs, the granting of shape trademarks to the rightful owners is still a complicated subject for it is never a certainty as to who might come out as the victor in each legal battle, unlike traditional trademarks such as words and phrases. It is safe to say our understanding of 3D trademarks are continued to be shaped by each court outcome.
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