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The golden color of a chocolate Easter bunny is not protected as a color mark. The Oberlandesgericht (OLG) München – the Higher Regional Court of Munich – found that the producer in question did not enjoy any trademark rights in relation to the color.
In the weeks leading up to Easter, supermarket shelves are stacked with chocolate bunnies. One producer has been packaging its chocolate bunnies in a gold-colored foil for many years. We at the commercial law firm MTR Rechtsanwälte can report, however, that the longstanding use of this color has not given rise to any rights under trademark law. That was the verdict of the OLG München in a ruling from July 30, 2020 (Az.:29 U 6389/19).
The producer has been selling its chocolate Easter bunnies in packaging featuring this golden color for many years. After discovering that a competitor had also placed chocolate bunnies in gold packaging on the market, it decided to file a lawsuit, arguing that the competitor’s conduct infringed its trademark rights.
Yet, in doing so, it did not assert rights arising from its registered color mark but instead invoked an abstract color mark, claiming that consumers would associate chocolate bunnies in this golden color primarily with its products and that the color, having established itself, was protected as a trademark through use.
While the Landgericht München – the Regional Court of Munich – followed this line or reasoning, the OLG München took a different view, ruling that while abstract color marks may enjoy protection as trademarks through use if they acquire a secondary meaning, the plaintiff had failed to meet this condition for the golden color that it was using in the packaging of its chocolate bunnies.
The Court went on to state that in cases where it has already been accepted that a particular color mark has acquired a secondary meaning, the color forms part of the company’s corporate brand for its various products and services. This was found not to be the case here. The OLG held that the golden color in this case was only being used for the varying sizes and flavors of a particular product, noting that consumers were also familiar with the shape of this chocolate bunny. The Court concluded that chocolate bunnies which are packaged in gold foil but that otherwise have an entirely different appearance are not likely to be associated by consumers with the plaintiff’s products. The color was found not to have acquired a secondary meaning and thus had not been used as a trademark. The OLG has granted leave to appeal to the Bundesgerichtshof (BGH) – Germany’s Federal Supreme Court.
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