In its judgment of September 23, 2015, the BGH (German Federal Court of Justice) ruled in a legal dispute involving trademark law in favour of chocolate teddies, which were said not to have infringed the rights associated with the wordmark “Goldbären” (gold bears) (Az.: I ZR 105/14).
GRP Rainer Lawyers and Tax Advisors in Cologne, Berlin, Bonn, Düsseldorf, Frankfurt, Hamburg, Munich, Stuttgart and London - www.grprainer.com/en conclude: Chocolate bears wrapped in gold paper can continue to be stacked on store shelves. On September 23, 2015, the Bundesgerichtshof (BGH) brought an end to years of litigation, ruling that chocolate bears do not infringe the trademark rights of the registered wordmark “Goldbären”.
Products made of fruit gums as well as chocolate are very-well known to consumers, but gummy bears have been around for much longer and their manufacturer had the trademark “Goldbären” registered. It was claimed that the chocolate bears constitute an infringement of these trademark rights, which is why the fruit gums manufacturer, inter alia, asserted claims for destruction and damages. It argued that the chocolate bears were unfair counterfeits of the gummy bears. However, the claim was dismissed by the BGH, which went on to state that while the products were very similar there was no risk of confusion.
The Karlsruhe judges’ decision goes beyond the scope of the bear dispute itself, since they ultimately had to rule on whether and when a three-dimensional product such as a chocolate bear is capable of infringing the rights pertaining to a wordmark. According to the BGH, this is only possible if there is a similarity in meaning or significance. In this context, it is only the wordmark and the contested product trademark that should be compared. The Court stated that the shape of the plaintiff’s products, in this case the gummy bears, should not be included in the comparison of the trademarks.
Trademarks are of great value to businesses. Customer loyalty and a high recognition value in the minds of consumers are established based on trademarks. A trademark is associated with a particular product. It is important to protect a trademark in order to prevent other market operators benefiting from its success. Registering a trademark can safeguard against counterfeiters. If trademarks rights are infringed, it is possible, among other things, for damages claims to be asserted. Businesses can turn to lawyers who are competent in the field of trademark law for assistance in enforcing and fending-off claims.