GOLDBÄREN: protectability of non-distinctive trademarks based on existing registrations

According to a fundamental legal principle codified in the Constitution, every person is equal before the law. Similarly, comparable cases should be dealt with comparably. In a recent case the Federal Administrative Court allowed the registration of a trademark that it considered to be non-distinctive based purely on the existing registration of several other similarly non-distinctive trademarks.

Facts
German sweet manufacturer Haribo registered the word mark GOLDBÄREN ('gold bears') for "confectionary" in Class 30 of the International Register (IR 823 911). In August 2011 the protection was extended to Switzerland. In July 2012 the Swiss Federal Institute of Intellectual Property (IPI) issued a provisional refusal against the registration on the grounds that the sign was an indication of the characteristics of the product – namely, quality, colour, form and nature. According to the IPI, consumers perceived the sign as a reference to gold-coloured products in the shape of a bear. Accordingly, the sign was purely descriptive and therefore not protectable.

Haribo then restricted the list of goods to "Confectionery, namely jellied candy". It argued that the sign was not descriptive because gold is neither the colour nor an ingredient of jellied candy. Further, such goods were not packaged in gold foil in contrast to, for example, chocolate products. Finally, Haribo pointed to a plurality of registered marks offering protection in Switzerland for food products that comprise the element 'gold'.

The IPI adhered to its opinion and confirmed the refusal of protection. Haribo filed a complaint with the Swiss Federal Administrative Court.

Decision

In its decision, the Federal Administrative Court was very clear that in its opinion, the sign GOLDBÄREN was an advertising indication pointing to bear-shaped products of particular quality. Accordingly, the sign was non-distinctive.

Nevertheless, the court took into account that a considerable number of comparable trademarks for comparable products have obtained protection in Switzerland (eg, GOLDFISH for pastries and confectionery, GOLD STAR for food products, GOLD HERZ'L for, among other things, confectionery and GOLD BUNNY and GOLD REINDEER for chocolate). All these trademarks are based on the same concept – namely the combination of the element 'gold' with the name of an object or animal. According to the court, the protectability of the trademarks claiming protection for chocolate is even weaker because it is usual to package chocolate products in gold foil. Therefore, it would be unjust if those marks were protected while the mark at hand was refused protection. The previous registrations demonstrated a longstanding practice starting in 1980 and continuing today. There was no preponderant public or private interest in refusing to protect the sign. Finally, the court remarked that the scope of protection of the sign was limited.

Thus, the court concluded that the trademark could be protected in Switzerland due to the non-discrimination precept.

Lessons learned
It is uncommon for a trademark to be registered purely because of pre-existing trademarks. The court's decision clearly sets out the requirements that must be met in order to obtain such registration:

• a longstanding and ongoing practice of registration with respect to trademarks that are comparable (in terms of both the sign and the claimed goods or services);
• no explicit change of practice between registration of the earlier trademarks and the time of examination of the trademark at issue;
• no preponderant public or private interest in refusing the registration; and
• no monopolisation of single descriptive terms (ie, a limited scope of protection of the trademark).

The final requirement points to the so-called 'Freihaltebedürftigkeit', a principle of Swiss trademark law according to which certain signs must be kept free for the trade. Registration of a trademark based solely on the non-discrimination precept should not lead to a substantial impediment of trade.

The value of a trademark that has been explicitly held by the Federal Administrative Court to be non-distinctive and that has been registered only on the basis of non-discrimination is questionable. It is to be assumed that a court dealing with alleged infringement of the mark would give it a narrow scope of protection. As soon as there is a minimal difference with respect to the signs or a certain difference with respect to the products, any risk of confusion will be negated. There is even a certain risk that the court will deny the protectability of the trademark or even cancel the trademark if there is a corresponding counterclaim of the alleged infringer.

Accordingly, if possible a rights holder should try to obtain protection for an important mark in another way, such as on the basis of secondary meaning.

Haribo's GOLDBÄREN trademark has gained publicity in another respect. Based on its GOLDBÄREN trademarks, Haribo filed a complaint against the 'Lindt Teddy' owned by Swiss chocolate manufacturer Lindt & Sprüngli. The Lindt Teddy is a teddy bear-shaped chocolate product wrapped in gold foil. In Autumn 2015 the German Supreme Court ruled that there was no trademark infringement, in particular because it should not be possible for a party to monopolise a certain class of three-dimensional shapes on the basis of a word mark. In this respect, it is interesting that the Swiss Federal Administrative Court explicitly held in its decision that GOLDBÄREN was even more clearly descriptive for chocolate products because such products are often offered in gold-coloured packaging.

Finally, it is interesting that the Federal Administrative Court held that it is possible to argue acquired secondary meaning only in the second instance, and that this would lead to remittal of the case to the first instance if the mark was not registered due to other grounds. In practice, this allows for a stepwise proceeding whereby the substantiation of acquired secondary meaning – which may be labourious and costly – may be postponed until both the first and second-instance courts have ruled that the trademark is not protectable due to other grounds.

The court's decision is not final; an appeal may be lodged with the Federal Supreme Court, whose ruling would be final.