A well-known Swiss chocolate manufacturer has been trying to achieve trademark protection for its golden Easter bunny for several years now. So far, its endeavours have been unsuccessful: The trademark application for the “Goldhase” (German for “golden bunny”) as a 3D-mark was rejected several years ago. In a recent decision, the Higher Regional Court of Munich now found that the bunny’s characteristic golden colour is also not eligible for trademark protection (Higher Regional Court Munich, decision from 30th of July 2020 – 29 U 6389/19).
Background
During the first instance, the chocolate manufacturer had argued that the golden colour of the chocolate Easter bunny had gained great public reputation through intensive use and advertisement throughout many years, and for this reason consumers would associate the colour with the Swiss manufacturer and its chocolate Easter bunny. The Regional Court Munich I agreed with this view and recognized the particular shade of golden colour as a colour trademark acquired by use due to the reputation it enjoys with the public (file reference 33 O 13884/18).
The defendant, who had been sued over the sale of his own golden Easter bunny by the Swiss chocolate manufacturer, subsequently appealed against the Regional Court’s decision, arguing that the golden colour was not eligible for trademark protection for chocolate Easter bunnies.
Decision
The Higher Regional Court Munich granted the appeal in a recent decision. It found that abstract colour marks may be eligible for protection as marks acquired by use due to the reputation they enjoy with the public. However, the Court decided that the golden colour of the Easter bunny had not acquired the necessary reputation. It also found that no other view could be derived from a public survey that the Swiss chocolate manufacturer had presented in the Court of first instance.
The Higher Regional Court stated that up to now, sufficient reputation of abstract colour marks had only been accepted where a company uses a certain colour as its corporate colour to distinguish certain goods and services it offers. However, in the present case, the Swiss chocolate manufacturer had solely used the golden colour for one of his chocolate Easter bunnies. According to the Court, the public thus only associates the golden colour with the chocolate manufacturer if it is used in connection with the familiar shape of the specific chocolate Easter bunny. On its own, the golden colour would not suffice to distinguish products from the Swiss chocolate manufacturer, as it only uses the particular shade for its chocolate bunnies, not for other products. This fact distinguishes the case at hand to cases of other abstract colour marks, such as the particular shade of red used by the German bank "Sparkasse" or the shade of blue used by Nivea, as these are both used for a range of products.
Conclusion
The decision is not yet legally binding: The Swiss chocolate manufacturer is still able to appeal to the German Federal Court. It therefore remains to be seen, should the chocolate manufacture appeal, if the German Federal Court will adopt the view of the Court of first instance or if it will follow the view of the Higher Regional Court according to which the golden colour only indicates the Swiss chocolate manufacturer as the commercial origin when used in connection with the characteristic chocolate bunny shape. Either way, this case demonstrates that the standards for trademark protection regarding the sufficient reputation for colour marks acquired by use are high.
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