Gold Bear or Golden Teddy?

This blogger loves both Haribo Gummi Bears and chocolate in all shapes and would never risk to confuse edible gummi animals with with edible chocolate animals (in particular rabbits), even in cases where both belong to the same zoological species.

It was therefore surprising to him that the judges of the judges of the cologne district court found a risk of confusion between Haribo Gold-Bears (Goldbären) and the Lindt Chocolate Teddy - a sitting wrapped in Gold foil.

 The case went through the instances to the BGH, who judged today that a likelihood of confusion does  indeed not exist.

According to the BGH, the comparison between a word mark and the three dimensional shape of the product is to be limited to the semantic content of the word mark (Goldbären) without consideration of the shape of the products (Gummi Bears) sold under that word mark. Further, strict requirements are to be imposed in order to avoid an extension of the monopoly of the trademark to product designs.

A precondition for the likelihood of confusion is that the word mark is an obvious, natural and exhaustive (naheliegende, ungezwungene und erschöpfende ) designation of the three-dimensional design. It is not sufficient that the trademark is only one among multiple obvious designations of the product shape.

In the case at issue, the BGH found that the chocolate bear could have been designated as "Teddy", "Schokoladen-Bär" or "Schokoladen-Teddy" instead of "Goldbär" and concludes that the likelihood of confusion does not exist.

Trademark Registration of Shapes which give Substantial Value to the Product

The IPKat has reported an interesting General Court of the EU decision in an appeal of Bang & Olufson against an OHIM decision.

The procedure dealt with the question whether or not the shape of the loud-speaker should not be registered because it "gives a substantial value to the goods" in the sense of Article 7(1)(e) of Regulation No 40/94.

The press release says:
In the Court’s view, that design is an essential element of Bang & Olufsen’s branding and increases the value of the product concerned. Furthermore, it is apparent from extracts from distributors’ websites and on-line auction or second-hand websites that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point.

Whilst I perfecly agree with this judgement, this appears to be in conflict with an
older decision of the BGH on a BMW radiator cowling, wherein

the BGH argues with regard to §3(2)Nr.3 MarkenG that this exception applies where the aestethic shape of the goods is considered the actual "tradable value", whereas it does not apply in cases where the shape/design is only an "ingredient" of the good, which has other functions besides of beeing beautiful.

I think that the fact that the B&O loudspeaker has other functions besides of beeing beautifulcannot be reasonably constested.

My impression is that the court was led by the empirical fact that every boy in Germany can tell the brand of a car by looking at a radiator cowling, which is not the case for loudspeakers. Given this, it is surprising that the BGH has finally rejected the BMW cowling as being "devoid of any distinctive character". Apparently, BMW had not conducted a poll.