Haribo, the confectionery maker most well-known for its gummy bears, claimed that Lindt’s gold chocolate bear infringed Haribo’s word trade marks GOLDBÄR and GOLDBÄREN (meaning ‘gold bear’ and ‘gold bears’, respectively) and its 2D image trade mark of a bear.
Haribo sought a wide range of remedies including damages and the withdrawal and cessation of sales and destruction of all gold chocolate bears. What an unbearable thought!
This was a significant case in Germany as it was the first time that a court has had to consider whether a 3D shape could infringe a word mark. What the court had to compare was the 3D Lindt gold wrapped chocolate bear against the words gold bear(s). The shape of the product in respect of which the word mark is used – that is, the shape of the gummy bear – was not to be included in the comparison.
The court said that it was possible for a 3D shape to infringe a word mark if they had a similar meaning, that is if the word mark is the only obvious designation which could be given to the 3D shape. A strict standard applies otherwise the owner of the word mark could be granted a monopoly over a wide range of products.
When one looks at the Lindt chocolate bear, what words come to mind? While gold bear would be one possible description, it could also just as likely be referred to as chocolate bear, teddy or chocolate teddy. It is not sufficient that the word mark was one of the many possible terms which could be given to the 3D shape. As such, the court found there was no similarity in meaning here and thus no infringement by the Lindt chocolate bear.
With respect to the 2D image mark, unsurprisingly, the court found that the Lindt gold chocolate bear was not similar.
Australian courts have not had to consider whether 3D shapes can infringe word marks.
However, we do know that 3D shapes can infringe a 2D trade mark. The courts have considered this issue on a handful of occasions and only in respect of trade marks comprising a 2D pictures or shapes.
For a 3D shape to infringe a 2D mark, the shape and mark must be substantially identical or deceptively similar and the 3D shape must be functioning as a trade mark, that is it must be used as a badge of origin. For example, a confectionery wholesaler was found to have infringed Coca-Cola’s registered trade mark comprising a drawing of a contoured bottle by importing and distributing lollies in that same shape*. The shape of the lollies was similar to the registered mark and distinctive features on the lollies, being the silhouette of the bottle, the fluting of the bottle and the label band, amounted to use as a trade mark as the features distinguished the goods from other traders. In contrast, Remington’s triple-headed configuration for its rotary shaver was found not to infringe Philips’ registered device marks for the triple head of a rotary shaver. This was because Remington was not using the triple head as a badge of origin, but rather it was functional, being one of the best designs for a rotary shaver at that time**.
In addition, a 2D image could infringe a word trade mark in Australia. The Australian Trade Marks Office found that a 2D image mark of an Emu was deceptively similar to the word mark EMU***. The only idea or name that would be associated with the Emu image mark is ’emu’, which is precisely the same idea that would be associated with the word mark EMU. Therefore, it is possible that a 3D shape or image may also infringe a word mark if both convey exactly the same idea.
Unfortunately for Haribo, if it had brought its claim in Australia, one suspects it would have faced the same outcome.
* Coca-Cola Company v All-Fect Distributors Ltd  FCA 1721
** Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd  FCA 876
*** Constellation Australia Ltd v Littore Family Wines Pty Ltd  ATMO 47
You can find more information about the AANA codes of conduct for advertising along with an overview of advertising regulation here https://aana.com.au/advertising-regulatory-guide/