Contrary to the decision of the court of lower instance, the German Federal Supreme Court decided, that there is a risk of confusion between the "Golden Chocolate Rabbit" of the company "Lindt" and the chocolate rabbit of the company "Riegelein". Due to this fact the case was remanded to the court of lower instance.
The 1st Civil Court of Appeal of the German Federal Supreme Court which is, amongst others, responsible for trademark law had to decide on claims emerging from the registered, three-dimensional trademark for chocolate "Lindt-GOLDHASE" (original in German language).
This community trademark, which was registered at the Office for Harmonization in the Internal Market on July 6, 2001 is made up of a sitting rabbit with a red collar with a bow and a little bell wrapped in golden sheeting, having the imprint "Lindt GOLDHASE". With their legal action aiming at injunction, the right to disclosure and damages, the claimants disapprove the respondent's production and distribution of a likewise sitting chocolate-rabbit, wrapped in golden sheeting.
The District Court and the Appellate Court rejected the legal action. According to their decision, there was no risk of confusion between the registered community trademark and the golden chocolate rabbit distributed by the respondent. The first inventive attribute of the claiming trademark is the word-component "Lindt-GOLDHASE" and the second inventive attribute is the red collar with bow and little bell. Contrary to this, the chocolate rabbit of the respondent shows the word-component "RIEGELEIN CONFISERIE" and instead of the red bow with the bell, there is a brown/red bow printed onto the sheeting. According to their decision there is such an enormous difference between the decisive elements, that the risk of confusion can be excluded even though the products are similar and the distinctiveness of the claiming trademark is higher. The appeal of the claiming party led to the abrogation of the appealed decision and to the remanding to the appellate court.
The German Federal Supreme Court criticised the decision of the overall-impression of the claiming trademark made by the Appellate Court. Contrary to the opinion of the Appellate Court it decided that it cannot be presumed that the figurative overall-impression of the claiming trademark is only due to the word-component "Lindt-GOLDHASE". According to the German Federal Supreme Court it can only be presumed that commerce turns more to the figurative part, if the auxiliary attributes do not have an important meaning. This is not valid for this case. According to the conclusions of the Appellate Court the attribute of the red collar with bow and bell is one of the distinctive parts. However, the Appellate court has not paid enough attention to the fact that according to interviews presented by the claiming parties it can be seen that the protected golden rabbit has a very high distinctiveness. Due to that, the shape and colour must not remain unconsidered, when assessing the similarity between the trademarks because a decisive importance is attached to attributes having a high distinctiveness for the overall-impression of the design. Due to the fact that the overall-impression of the claiming trademark is not declared properly, the decision of the appellate court, that there was no risk of confusion as the difference between the trademarks is high enough, cannot endure.
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