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golden bunny that was revoked by the General Court due to lack of distinctive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
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.