April 2012

Lindt's golden bunny has - as is generally known - already hopped its way to Luxembourg in order to clarify under what conditions a trade mark application has been filed in bad faith (C-529/07).

In a recent decision by the Austrian Supreme Court an almost twin brother of the golden bunny that was revoked by the General Court due to lack of distinctive character (EGC, T-366/08) was subject to a request of reopening court proceedings in Austria. The claimant argued that in view of the decision of the EGC it was clear that the trade mark in suit lacks distinctive character apart from the logo "Lindt Goldhase", which was the only difference between the revoked trade mark and the trade mark in suit. Accordingly, the only distinctive feature of the trade mark in suit was the logo, however, this logo was not provided for on the allegedly infringing bunnies. Thus, the already granted injunction should be lifted.

The claimant failed in all three instances. The Supreme Court took a rather formalistic approach according to which the claimant only argued that the infringement proceedings should be reopened, whereas the decision of the EGC only referred to the validity of a different trade mark. Thus, a decision in a different kind of proceedings concerning a different trade mark is not apt to serve as a reason for reopening court proceedings. Additionally, the Supreme Court argued that lack of distinctive character or the question whether the trade mark has acquired distinctiveness through use are legal questions which are not dealt with in the infringement proceedings. Thus, the Supreme Court found that the decision of the EGC does not have any impact on the infringement proceedings the claimant requested reopening of. Finally, the Supreme Court confirmed that in its view based on an overall assessment of all relevant facts there is a likelihood of confusion between the trade mark in suit and the defendant's bunny.

From a legal point of view this decision is certainly accurate. However, as the reasoning of the EGC with regard to the distinctive character of the golden bunny trade mark contradicts the reasoning given by the Austrian courts, the diverging decisions leave the impression that the European trade mark system as it is set up currently is far from optimal.

Dr. Rainer Beetz, LL.M.