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Three-dimensional trademark: Lindt wins favor with the Federal Court

 Philippe Gilliéron

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- Philippe Gilliéron
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On August 30, 2022, the Federal Court put an end to a saga concerning the extent of the protection conferred to what can now be called, in Switzerland at least, the “famous” Lindt rabbit, in its decision 4A_587/2021.

Protection of the Lindt rabbit as a three-dimensional trademark

It should be remembered that the protection of the rabbit as a three-dimensional trademark has been assessed differently in different countries.

Denied by the Court of Justice of the European Union in 2012 (C-98/11P), a decision confirmed five years later by the EUIPO Grand Chamber (July 7, 2017, case R 2450/2011-6), the protection of said rabbit was nevertheless admitted in Germany in a case brought to the Bundesgerichthof on July 29, 2021 (I ZR 139/20).

While the protection in Switzerland did not generate as much controversy, the scope of protection conferred on this registration was still open.

The Lindt decision rendered by the Federal Court: opinion poll and scope of protection conferred on the three-dimensional mark

This was the question posed by the Federal Court in a case where the said rabbit was opposed to the one marketed by Lidl, thus represented, with the question of whether there was a likelihood of confusion between them:

The Federal Supreme Court began by looking at the opinion poll, which was an essential element of the case, in order to emphasize the very strong distinctive character of the Lindt rabbit and, consequently, the fact that it should be granted extended protection.

In this case, the recognition rates were of the order of 90%, making it in fact a well-known trademark, even if the Federal Court does not use this notion. This is an opportunity for the Federal Court to recall that the opinion poll, far from being a simple statement of the parties, is the proof par excellence to demonstrate the rate of recognition of the trademark in the relevant circles, and that its execution, for the most part, online and not face to face, cannot call into question its relevance. It is a title in the sense of Art. 177 CPC, but it is subject to the free assessment of evidence in accordance with Art. 157 CPC. 

If the fact of having entrusted the realization of the survey to the wife of one of the partners of the office representing Lindt appears somewhat inadequate, the Federal Court notes, in our opinion rightly, that one cannot speak of a conflict of interest that could cast doubt on the objectivity of the report, since the person drawing up the report is in fact only transcribing the results of the said survey, results that reflect the point of view of the relevant circles, not of the writer of the report.

Having accepted that the three-dimensional shape of the Lindt rabbit has acquired secondary meaning (durchgesetzte Marke), the Supreme Court then examined the question of whether the rabbit marketed by Lidl violates the exclusive rights under Art. 3 para. 1 lit. c of the Trademark Law.

Reversing the decision of the Commercial Court of the Canton of Aargau, which had denied the existence of a likelihood of confusion, the Supreme Court considers that the public cannot be considered to pay more attention to rabbits sold mainly on a particular occasion, Easter, than throughout the year.

Given the highly distinctive character of the Lindt rabbit, it enjoys particularly extensive protection. Notwithstanding the differences in detail between the two rabbits, the overall impression of the rabbit that remains in the public mind is similar.

Once the shape of the rabbit has become established on the market, the Federal Court considers that there is no reason to question whether the essential features of the rabbit have been adopted, since it is the shape as a whole that has become distinctive in the public mind.

Of particular interest is the opinion of the Federal Court that the express mention of the trademark “FAVORINA” on the Lidl rabbit does not exclude the likelihood of confusion, since such an indication is usually not taken into account by the target public in the food sector, where the shape and presentation of the products are much more important than the verbal elements in the decision to buy.

This statement may come as a surprise given the case law in the field of tangible products in the Nivea/Jana decision (ATF 116 II 365) and the constant case law in the field of watches, where the presence of different trademarks on the dial is considered to exclude any risk of confusion. Is the food industry so different? Does this statement only apply to products where the three-dimensional shape plays a particular role? The assertion made by the Supreme Court should most likely not be seen as a statement of principle, but the question remains.

In any case, in the present case, the Supreme Court, accepting the likelihood of confusion under Art. 3 para. 1 lit. c of the Trademark Law, left open the question of whether the Lindt rabbit constitutes a trademark with a high reputation or whether an action based on Art. 3 para. 1 lit. d and 3 para. 1 lit. e of the Unfair Competition Act would have succeeded.

Commentary on the Lindt decision by the Federal Court: free riding as a missing link?

Overall, the judgment is convincing, although the reader is left wanting in some respects:

Since the opinion poll showed a recognition rate of about 90%, one may wonder whether it would not have been simpler to conclude that the Lindt rabbit is a well-known trademark and, consequently, to conclude that its reputation had been exploited as permitted by art. 15 of the Trademark Law.

Indeed, it is questionable whether there is a true likelihood of confusion between the two rabbits. One has to admit that the Supreme Court does not ignore the question and concludes that such a risk exists.

This however is an opportunity to question the scope of the traditionally more extensive protection afforded to strong trademarks (ATF 122 III 382). If the extension of this protection is, in itself, in our opinion justified, does it really have to do with the likelihood of confusion? Since the shape of the Lindt rabbit is so well known, should we not rather conclude that, from the point of view of the likelihood of confusion, the public will be all the more inclined to perceive the differences with a competing rabbit? Without saying that the action should have been rejected, which we do not think so in view of the image transfer thus created, was the behavior to be sanctioned not more of a free riding than of a likelihood of confusion, a behavior that art. 15 of the Trademark Law would have allowed to sanction without any difficulty?

Generally speaking, shouldn’t we consider that the protection conferred on strong trademarks reflect, in reality, a desire to protect the investments made by the owner to obtain such recognition and, thus, to protect an advertising function of the trademark by integrating a component that is actually more related to considerations of competition than to the likelihood of confusion in the strict sense? Doesn’t this amount to an attempt to sanction, from the standpoint of the likelihood of confusion, cases where a transfer of image takes place between products, thereby extending the notion of similarity of signs and likelihood of confusion to cases that are perhaps more akin to parasitism?

In any case, it is regrettable that the Supreme Court avoids the question of whether Lidl’s behavior should not have been covered by Art. 2 or 3 lit. e UWG. At a time when “look alike” and the question of free riding are often more important for trademark owners than the question of whether there is a likelihood of confusion, this would have been a good opportunity for the Supreme Court to refine its jurisprudence, which is quite rare in this area, in order to determine what, in a given case, constitutes an acceptable market practice or, on the contrary, a conduct that is likely to distort competition and that should be discouraged. Regrettably, the Supreme Court has not done so.

In the end, the result seems to me to be correct and Lindt deserved to see the very strong distinctive character of its rabbit acquired after consequent investments protected; as for the question of knowing if the argumentation is correct, it is another matter, the hypothesis of parasitism which would deserve to be more widely retained before our courts seeming to me in this case perhaps more relevant than that of the likelihood of confusion.

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