It appears to be one of these never-ending stories: the European courts and the bunnies.  This time it was for the German Bundesgerichtshof to decide… yet again, one should add since this is not the first time the Bundesgerichtshof had to consider these funny little bunnies. 

Please click here to read one of our very early posts from December 2007 on this very case dating back to the early days of Class 46. To read about the ECJ's famous bad faith/bunny decision, please click here.  To read about the Austrian bunny saga involving the same parties, please click here.

So here we go again: the First Civil Senate of the German Federal Supreme Court (Bundesgerichtshof) on 15 July 2010 had to again decide whether a registered trade mark for the three dimensional "Lindt-Goldhase" (Lind Gold Bunny), covering chocolate goods, conveys the right to prevent the distribution of similar chocolate bunnies (by a competitor).

Please find a summary and translation of the Bundesgerichtshof's press release of 16 July 2010 below.  The full decision is not yet available.

The claimant's trade mark was registered on 6 July 2001 and consists of a sitting chocolate bunny that is covered by gold foil and which wears a red ribbon collar with a bell.  The words "Lindt GOLDHASE" (Lindt GOLD RABBIT) are also printed on the bunny.  The chocolate manufacturer Lindt & Sprüngli's objects to the production of the chocolate bunnies by its competitor Riegelein. Riegelein also produces chocolate bunnies which Lindt believes to be confusingly similar to its own bunnies.  Lindt's claim for injunctive relief also includes a request for information and damages.

In the first appeal proceedings in October 2006 (ZR 37/04, BGHZ 169, 295), the Bundesgerichts had already overturned a negative decision by the Higher Regional Court of Frankfurt a. M. (on appeal from a Landgericht Frankfurt decision, case 2/3 O 443/02 of 19 November 2002), and referred the bunny case back to the Frankfurt court for a new decision. The Frankfurt court subsequently (case 6 U 10/03 of 8 November 2007) again denied a likelihood of confusion between both chocolate bunnies since the design of both bunnies was not similar enough.

In the second appeal proceedings to the Bundesgerichtshof, the Federal Court now also overturned this second decision by the Higher Regional court and referred the case back once more.  Why? It appeas some evidence had been misplaced.  At the proceedings at the Frankfurt court a sample Riegelein bunny had been presented.  Since the Higher Regional Court had paid detailed attention to the choice of colours used on the bunnies, the claimant Lindt had decided to amend its claim to relate to the chocolate bunny as presented at the oral proceedings.  Unfortunately, the Higher Regional Court had based its decision, in which it had denied a likelihood of confusion between both bunnies, on the foil as used on the Riegelein bunny as presented at the court hearing.  Sadly though, it appears that the Riegelein bunny, which should have been kept with the case files, and which had been of a "particular shade of bronze" that, according to the factual findings of the Higher Regional Court, was "clearly distinguishable from the shiny gold coloured foil" used on the Lindt bunnies, had been lost.  Consequently, the Bundesgerichtshof did not find itself in a position to verify these findings since the original Riegelein bunny, which had been handed over to the Higher Regional during the oral proceedings was no longer included in the actual case files that had been sent to the Bundesgerichtshof.  An investigation at the Higher Regional Court did not reveal anything conclusive. To add yet another twist to this story, the press release goes on and tells us that both parties, (Lindt's and Riegelein's lawyers that is), could not agree whether a new Riegelein bunny, which had been introduced at the Bundesgerichtshof's hearing, showed colours that were identical to the colours of the lost bunny the Higher Regional Court had examined earlier.

However, the press release goes on the emphasise that this was not the only reason that led the Bundesgerichtshof to overturn the Higher Regional Court's second appeal decision.

In view of the Bundesgerichtshof a likelihood of confusion between both bunnies cannot not be denied based on the Higher Regional court's reasoning: the Bundesgerichtshof decided that the Higher Regional Court had not correctly determined the overall impression conveyed by each bunny (shape and colour of the bunny and further composite elements such as the red ribbon with bell and the painted face). Furthermore, in view of the Bundesgerichtshof the Higher Regional court had also not assessed the results of a survey correctly. This survey had erroneously only been referring to a sitting Lindt bunny that did not include any facial paint elements and that had not shown any printed letters on the bunny.  When asked as to the trade origin of the bunny, a majority of the persons asked in the survey had answered: Lindt & Sprüngli. The Higher Regional court had hence concluded that the Lindt bunny's heightened degree of distinctiveness was based on its shape and colour.  In light of this background, the Bundesgerichtshof objected that the Higher Regional court had not properly justified its decision; moreover, the differing design features of both bunnies were determinative importance.

Class 46:  the case will now again and for the third time have to be considered by the Higher Regional Court of Frankfurt.  Bearing in mind that this is already an appeal from the Landergericht Frankfurt (original decision from 2002), we can only hope that both sides will have all their bunny evidence in place and retain an identical sample for their own files, so that a final decision can be handed down some time soon.

Bundesgerichtshof, decision I ZR 57/08 of 15 July 2010. The court's press release of 16 July 2010 can be found here (in German). The full decision will eventually be posted here.