Member Article

The company Lindt & Sprungli is the maker of the famous Lindt chocolate bunny. The product comprises chocolate in the shape of a squatting bunny, wrapped in gold foil with a red ribbon and a small bell. The chocolate bunny is a very big seller around Easter time, with sales in the tens of millions.

Image source: The Gaurdian 

SWITZERLAND

Lindt has two Swiss trade mark registrations for the bunny, one in black and white and one in the colours gold, brown and red.

Lindt recently brought a trade mark infringement case against the supermarket Lidl in Switzerland. Lindt’s complaint was that Lidl was infringing its rights by selling a product comprising a similar rabbit-shaped chocolate in foil and with a ribbon. Lidl responded by arguing that the shapes are commonplace and do not qualify for registration.

The Swiss court held that Lindt’s trade mark registrations are valid. The court referred to consumer surveys that show that consumers do in fact associate the shape with Lindt. It went on to find that there had been an infringement.

The court held that the destruction of the product was justified. Yet unusually it went on to say that this “does not necessarily mean that the chocolate as such would have to be destroyed”, suggesting it could be melted down and used in other ways. It’s not clear if this shape-shifting advice was taken up.

ELSEWHERE IN EUROPE

The enforcement of the IP rights in the chocolate bunny has been a bit of a mixed bag for Lindt. It’s won similar cases in Austria and Germany against rival chocolate manufacturers. In Germany, Lindt focused its efforts on the colour gold and submitted a survey that showed that 70% of respondents associated the colour with Lindt.

Yet, despite having various national trade mark registrations for its product shape, Lindt failed in its attempt to get an EU trade mark registration for the shape and colour (including the red ribbon and bell), because the authorities felt that it was not sufficiently different from other chocolate products.

It’s worth bearing in mind that EU trade mark authorities take the view that consumers are less likely to see the shape of a product as an indicator of commercial origin than a brand name or logo. They generally require proof that the shape has been around for some time, and that it also departs significantly from the norms of the industry.

SUPERMARKET LOOK-A-LIKES AND COLIN THE CATERPILLAR

Cases like this are a stark reminder of how big the issue of supermarket look-a-likes is. South Africans are sometimes amazed when they see how blatant the copying can be in places like the UK. Some readers will remember that we discussed this phenomenon a while back in an article on Colin the Caterpillar and the rather amusing spat between Marks & Spencer and Aldi.

Image source: Wikimedia commons

SOUTH AFRICA

The issue of supermarket look-a-likes is less of a thing in South Africa than it is in some other countries. Yet, cases of this sort can arise. When they do there are various options.

Trade mark infringement

If the company whose brand is being copied has done the sensible thing and obtained a trade mark registration for the particular get-up or packaging (like a shape or colour trade mark), it will be able to respond by suing for trade mark infringement. It's worth noting that the definition of a “mark” in the South African Trade Marks Act, 1993 is very wide:

“Any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforesaid.”

Passing off

Even without a trade mark registration, the brand owner may be able to sue for passing off, but it is important to remember that a passing off case can be far more difficult than a trade mark infringement case because it requires proof of reputation/goodwill.

Unlawful competition

Passing off forms part of the wider field of unlawful competition. Unlawful competition covers somewhat vague and elastic notions such as the general sense of justice, fair play and the morals and ethics of the particular business community.

There have been cases that have suggested that the copying of a competitor’s product shape or appearance might constitute unlawful competition if the motive is to harm the competitor rather than to grow the company’s own business.

Registered designs

When it comes to product appearance protection, a design registration is, of course, an option. It’s important to bear in mind that registration is only possible if the shape is new, which means that you can’t first test the product in the market and then seek registration. There is no examination as to substance so the application is almost bound to succeed, although it can be challenged after registration. The owner of a registration can stop others from using the registered shape for goods of that type. Design registration is time-limited to 15 years maximum.

Gaelyn Scott

IP Trade Mark Attorney Executive Head of Department

[email protected]