… but would it in Australia?
6 min read
The highest court in Switzerland, the Federal Supreme Court, has overturned a lower court’s decision and found that Lidl’s chocolate bunnies have infringed Lindt’s trade marks for the shape of its own chocolate bunnies. The court has ordered Lidl to ‘destroy’ – or, to avoid food wastage, melt and reshape – its chocolate bunnies.
This has been a welcome decision for owners of shape trade marks in Switzerland. We take a closer look and explain how things would be different in Australia.
- Historically, across the globe, shape trade marks – being non-traditional trade marks – have been difficult to protect (ie to register and enforce).
- Lindt would find it more difficult to win this kind of case against Lidl in Australia.
- It is harder to register and enforce a shape trade mark in Australia if there are other branding elements (eg a logo) present on, or used in combination with, the shape. A recent example of this is the Federal Court case RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd  FCA 1042 (see our Insight ), where a shape trade mark was removed from the register for non-use.
Who in your organisation needs to know about this?
Trade mark owners; in-house counsel; chocolatiers and confectionery companies.
A win for Lindt…but not for Guylian
Lindt’s chocolate bunnies take over the supermarket aisles every Easter.
The Swiss chocolatier has been on a mission to protect its chocolate bunnies – and for good reason.
Inspired by his daughter, who was heartbroken when a bunny left their garden, one of Lindt’s chocolatiers made a bunny from chocolate – then wrapped it in golden foil, and tied a red ribbon with a golden bell around its neck – to cheer her up. This is claimed to be the origin of the famous chocolate bunny. Lindt has been selling these chocolate bunnies – virtually unchanged – since 1952, and now sells about 160 million each year across the globe.
As a way to protect its 70-year-old chocolate bunny designs, Lindt registered several trade marks over its shapes in Switzerland – including:
|3D; no colour claim; acquired distinctiveness||3D; colour claim for gold, brown and red; acquired distinctiveness|
|30: Chocolate; chocolate products; chocolate figurines.||3;: Chocolate; chocolate products.|
|22 December 2016||17 August 2005|
Lindt has taken various competitors to (and been taken to) court over the choice of animal shape for its chocolates.
Lidl and the lower court decision
More recently, Lindt discovered that Lidl, the German discount retailer (and Aldi’s competitor), had begun to sell its own version of the chocolate bunny in Switzerland – pictured below:
In 2017, Lindt took Lidl to court over these chocolate bunnies, for the infringement of the two registered trade marks listed above. The issue was whether the bunnies were so similar that there was a likelihood of confusion.
To support its case, Lindt submitted survey results to show that its bunny shape was so well known – regardless of colour – that Lidl’s bunny would be likely to cause confusion. The survey on the awareness of Lindt’s bunny was conducted across about 1200 Swiss nationals aged between 15 and 74, in all language regions. The results showed that 94% of nationals recognised Lindt’s bunny in gold, and 95% recognised it in black and white.
The court undertook a very detailed comparison of the bunnies, based on everything from their posture, colour and ribbon, right down to the details of the pleats on their collar, shape of their pendant, inclination of their ears, and facial expression.
In the end, the lower court held that the bunnies were sufficiently different.
Lindt appealed and the highest court overturned the decision, finding that they were too similar.
The appeal decision
The Federal Supreme Court’s reasoning can be summarised as follows:
- The relevant market was the foodstuff market, where the average consumer was the general public, who were unlikely to pay careful attention to the details on the products. The fact that the bunnies were seasonal and sold only during Easter did not affect their attention level.
- The average consumer would recollect the general features of the bunnies, being a similar stylised bunny sitting on all four paws, with a ribbon and pendant.
- As Lindt’s bunnies had strong market penetration (shown by their survey results), the average consumer was more likely to recollect these bunnies, such that Lidl’s bunnies, with similar general features, would trigger some kind of connection and cause confusion.
- The word ‘FAVORINA’ on Lidl’s bunnies was not sufficient to distinguish them, as the average consumer would choose products based on their shapes, without necessarily consulting the label.
The court ordered Lidl to destroy their bunnies and awarded costs against them.
Not the same win for Guylian
To distinguish Australia from Switzerland – unluckily for Guylian – the Belgian chocolatier was not as successful with registering the shape of its seahorse chocolates in Australia.
Guylian submitted survey results that showed 40% of consumers recognised its seahorse chocolates. While this figure is lower than Lindt’s, that is not why Guylian lost its case. The Federal Court refused its appeal for two main reasons:
- Other chocolate manufacturers were likely to need to use the same seahorse shape for their chocolates.
- Guylian’s evidence of use showed chocolate boxes containing the seahorse-shaped chocolates but that had ‘G’ or ‘Guylian’ printed on their fronts. Consumers would be likely to use these word features, rather than the seahorse shape itself, as signals to recognise that the chocolates were Guylian’s.
In Australia, as the Guylian and RB cases demonstrate, it is difficult to register and enforce shape trade marks if the shape, or depictions of the shape trade mark, are used in conjunction with other branding elements.
Lindt is likely to have a better chance than Guylian of obtaining registration over the shape of its chocolate bunnies, given the differences between how the respective chocolates are packaged.
Actions you can take now
- Review your products to see if any shapes need to be protected.
- If you want a shape to be recognised as a branding element, it will be necessary to emphasise in marketing materials that it is functioning as a badge of origin – in at least some materials, the shape will need to be represented alone as the branding element, so that it speaks for itself as a trade mark.
- If you are a chocolatier or confectionery company, it will not be impossible to protect the shape of your chocolates or lollies (eg in the 1990s, Coca-Cola was successful in stopping the sale of confectionery in the shape of its distinctive bottle) but you will need to invest significant time and money. Before you create a new chocolate or lolly shape, it is recommended you conduct a clearance search to check that it does not infringe any trade marks. You may have to think twice about selling any bunny-shaped chocolates in Switzerland …