By P. Kandiah
It’s the Year of the Rabbit in the Chinese lunar calendar, and the battle of the rabbits has begun!
In a judgement handed down on 30 August 2022, the Swiss Federal Court held that the shape of the bunny wrapped in a golden foil was distinctive of Swiss chocolatier company Lindt & Sprüngli’s bunny chocolate and that Germany-founded retail giant Lidl had infringed on Lindt’s registered three-dimensional (3D) trademark. The Court subsequently ordered Lidl to destroy its entire stock of bunny-shaped chocolates and to refrain from further selling the said bunny-shaped chocolate in Switzerland.
Lindt created the Gold Bunny chocolate in 1952, and the milk chocolate bunny, adorned with a red bow and a bell around its neck, has gone on to captivate the world since. Lindt registered 3D trademarks for this creation in Switzerland – one in black and white and the other in gold, red and brown (shown below).
Swiss Trademark Registration Number: 696955, registered on 22 December 2016
Swiss Trademark Registration Number: 488276, registered on 23 August 2001
Swiss Trademark Registration Number: 536640, registered on 17 August 2005
In its defence, Lidl claimed that the shape of the Lindt bunny is common and non-distinctive. Lidl argued that, on this basis, it should not qualify for registration and that any registration is invalid.
However, the Swiss Court deemed the Lindt bunny’s 3D shape valid based on a consumer survey that demonstrated an unequivocal association between the bunny shape and Lindt. The Court also found that despite the presence of Lidl’s word mark “FAVORINA” on its product, consumers had disregarded the word and relied on the shape of the product. This case demonstrates that – at least in this instance – consumers pay more attention to the distinctive shape of certain category of product rather than word mark on the product or on its packaging.
3D trademarks not just for bunnies
Similarly, American drinks giant Coca-Cola had registered its iconic bottle shape as a 3D trademark in many countries, showing proof of consumers’ association of the distinct shape with its cola drink. The main advantage a business owner or corporation derives from a 3D trademark is that trademarks last a lifetime (as long as they are renewed every 10 years) whereas if that unique 3D shape is protected solely by industrial design rights, the design rights will expire within 25 years.
With the recent amendments to the Malaysian Trademarks Act in 2019, it is now possible for business and brand owners to register shapes and other non-conventional marks such as sounds, smells, colours, holograms, positioning, sequences and motions which are distinctive of a manufacturer’s product as a trademark in Malaysia.
On that note, our wish for this Rabbit New Year is for all entrepreneurs to be successful in business and their personal lives and to take the opportunity to identify the unique shapes, sounds, smells and colours that represent their products or services, and protect them. Drop us an email at firstname.lastname@example.org to find out more!
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