Lindt vs Lidl – Battle of the bunnies

Lindt, the Swiss master chocolatier does not need a further introduction to quality chocolate lovers around the world. It has recently ended up in a court battle with Lidl, the “Big on quality, Lidl on price” discounted retailer whose presence in the UK and EU markets has increased significantly in recent years.

Background

Lindt has taken Lidl to court over the similarity between their respective gold chocolate bunnies. The Lidl bunnies, wrapped in gold foil with a green bow and bell, have a strong resemblance to Lindt’s well-known Easter bunnies, which are wrapped in a similar gold foil with a red bow and bell. This has raised a possible issue of registered trade mark infringement.

The dispute ended up before the Federal Supreme Court of Switzerland. The court ordered that Lidl destroy all of their existing chocolate bunnies and cease production of any further stock.

The Lindt chocolate bunnies have taken a trip to court on numerous occasions previously. Be it registered trade mark infringement cases related to the colour of their foil, or the shape of the bunny itself, Lindt is keen to protect its flagship product by enforcing its rights in multiple jurisdictions, e.g.: previously in Germany.

Outcome

The Swiss litigation started back in 2018. The Federal Supreme Court eventually ruled in favour of Lindt, overruling the earlier decision of the lower court. The judge held that Lidl’s bunnies ‘arouse obvious associations with the shape of Lindt’s,’ and went as far as to say that ‘in the public mind, they cannot be distinguished.’

This resulted in an order for destruction of the Lidl bunnies. The court explained that destruction was a proportionate measure in this case, ‘especially as it does not necessarily mean that the chocolate as such would have to be destroyed.’ Indeed, in this case, the melted chocolate can be easily reused for another chocolate creature… hopefully Lidl does not follow into the footsteps of its competitor Aldi whose chocolate caterpillar cake, Cuthbert, caused a huge legal storm with Marks & Spencer, the creator of Colin the Caterpillar, last year. See our article about the UK’s most famous battle of the caterpillars HERE.

Wider Context

Whilst this is a decision of the Swiss court, a similar dispute could arise under the laws of England and Wales. If so, Trade Marks Act 1994 (“TMA”) would be the main relevant source of law. Trade mark infringement is dealt with under section 10 TMA. Broadly speaking, a registered trade mark infringement occurs in the following three circumstances:

• If a sign used in the course of trade is identical with a registered trade mark and used in respect of identical goods or services;
• If a sign used in the course of trade is identical to a registered trade mark, used in respect of similar goods or services (or vice versa – if the sign is similar and used in respect of identical goods and services) and there is a likelihood of confusion on the part of the public; or
• If a sign used in the course of trade is identical or similar to a registered trade mark which has a reputation in the UK (regardless of the similarity between the goods or services).

The goods and services relevant to the above assessment are those in respect of which the infringing sign is being used vs those in respect of which the registered trade mark is registered.

There are added considerations relevant to this assessment which may arise depending on the factual circumstances of a particular case.

The remedies available in registered trade mark infringement proceedings include injunctions, damages and orders for removal or obliteration of offending signs. There is also a possibility of orders for delivery up and destruction of infringing goods, which is a similar remedy to that ordered in the Swiss case.

How can we help?

If you have any queries or concerns related to registered trade mark infringement or infringement of any other intellectual property rights, please contact our Intellectual Property Protection & Disputes team.