© Lindt & Sprüngli/ © HARIBO GmbH & Co. KG

According to the German Federal Court of Justice there is no danger of confusing the chocolate bear and the fruit gum bear. Haribo felt that its trademark had been violated, but recently lost its court case against Lindt & Sprüngli about the bear with the red ribbon.

This packaging is protected!

When brand owners argue about the form and colour of their packaging

Patents on colours and shapes

It’s not a rare occurrence that manufacturers take each other to court, alleging plagiarism. Such disputes are often not just about the uniqueness of a product, but often also about protecting word-and-image logos on the packaging, as they are usually the customer’s first point of contact and therefore of major value.

But what exactly is at stake when a company seeks to protect its brand design? A permanent connection between text and graphics may be subject to protection in its entirety – unlike pure concepts. Therefore, once a patent has been registered, it must not be used by a third party without obtaining permission from the licence holder. In addition, registered designs serve the purpose of safeguarding the colours and shapes of lettering and packaging associated with existing brands. Nearly always, however, a judge’s decision moves along a very thin line.

Blue... bluer... bluest

Even experts frequently disagree about similarities between colour shades on packaging and whether it is possible to have such public domain features patented at all.

Beiersdorf vs. Unilever
Or indeed: the German Federal Court of Justice vs. the German Federal Patent Court. For the German Federal Court of Justice there is no question that the cosmetics company Beiersdorf has the sole right to the characteristic shade of blue on NIVEA tins, thus going against the decision of the German Federal Patent Court. However, the judges did recommend to the plaintiff, Unilever, that it should take the matter further, to the European Court of Justice. What triggered this patent dispute was a request for cancellation presented by Unilever for the shade of blue – Pantone 280 C – which had been registered as a protected colour by Beiersdorf for its bodycare line nine years ago. The judges at the German Federal Court of Justice believed that this characteristic shade of blue should be patentable in itself, independently of the logo.
The German Federal Patent Court, on the other hand, took a different view. In an expert opinion, Beiersdorf produced evidence that just under 60 per cent of consumers clearly associated this shade of blue with the Nivea brand – not enough for the Patent Court which maintained that at least 75 per cent were required for such a decision. '

For Unilever this means, for the time being, that their DOVE cream and shower packaging cannot have the protected colour, Pantone 280 C. Moreover, the German Federal Court of Justice was consistent in its decision, as it had previously ruled in 2014 that the characteristic yellow of the dictionary publishers Langenscheidt should be protected.

 © Beiersdorf AG
The colour blue as a subject of dispute: According to a decision by the European Court of Justice (ECJ), an abstract colour trademark can be protected if over half of all consumers recognise that particular shade as a characteristic feature of a specific company in the relevant industry. This percentage was also applied in a recent decision taken by the German Federal Court of Justice on the NIVEA colour shade Pantone 280 C in a dispute with Unilever. Photo: NIVEA cream tin © Beiersdorf AG
© Unilever
Generally speaking, an abstract colour trademark cannot be protected because colours are usually only perceived by consumers as decorative and not as distinctive product labels. However, the German Federal Court of Justice recently made two exceptions: It ruled that the blue shade of NIVEA and the yellow shade of Langenscheidt had become widely accepted as crucial features at the time of their registration, so that consumers now identify those companies by their respective colours. Photo: 200-ml tin of Dove Nutritive Solutions Intensive Repair Regenerating Conditioner © Unilever

Bears aren't bears

Haribo vs. Lindt & Sprüngli
“The happy world of Haribo” may not be quite so happy for the confectionery manufacturers right now. This is because, after many years of dispute about bears, the German Federal Court of Justice recently passed a decision in favour of the Swiss company Lindt & Sprüngli. The Maître Chocolatier had been selling its Lindt Teddy in gold foil with a red ribbon round its neck since Christmas 2011. Haribo, however, felt that the Lindt Teddy looked conspicuously like its own golden teddy bear. And so it went ahead with a court case against the chocolate manufacturers, but not without first quickly patenting its own bear. At the end of last year, however, the German Federal Court of Justice decided that although the two bears were externally rather similar, there was no danger of confusion.

Also, the judges did not want to impose excessively strict limitations on future trademarks and packaging ideas from the very beginning, but, on the contrary, they wanted to prevent any “monopolisation of product designs” with their ruling. This, they maintained, was the only way to ensure a sufficient amount of competition.

Protected designations of origin

USA vs. Europe
Since 1992 it has been possible in the European Union to protect geographical details and indications of origin on agricultural and food products. The EU quality seals “PGI” (protected geographical indication) and “TSG” (traditional speciality guaranteed) are intended to protect the promotion of traditional regional food products.

However, the U.S. Patent & Trademark Office does not think much of this and sees it as a violation of the equal treatment principle for products within and outside the European Union. In their statements, both the United States and Australia referred to European immigrants in their countries and demanded that typical products from the relevant home countries should also be permitted for distribution outside Europe’s borders. The final ruling on this issue is expected to take place sometime this year. So we will find out quite soon exactly which name can be used for promotional purposes where in the world and on what packaging – whether it’s Cognac, Sherry, Rioja or Roquefort.

 © www.gov.uk

Three EU quality seals are in place, encouraging diversity in agricultural production, protecting product names from misuse and imitation and helping consumers by giving them information about the specific character of a product. © www.gov.uk

Starbucks vs. coffee seller
Or perhaps we should say Goliath vs. David. The international coffee house chain is currently suing a coffee seller in Bangkok. The similarity of his Starbung logo and that of the protected green Starbucks emblem with the mermaid is undoubtedly rather striking. Using the same lettering, the mermaid was replaced by a man with his head covered. The ruling has not been given yet. If the retailer has to pay the fine – about €700, £445 or $786 – it will ruin his business completely.
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