;

In a move sure to upset chocoholics everywhere, discount supermarket Lidl was recently told to destroy its stocks of chocolate bunnies. The cull – which was ordered by a Swiss court that decided that Lidl’s bunny was too much like Lindt’s iconic chocolate rabbit – comes after Lidl was sued by Swiss confectioner Lindt & Sprüngli for selling a golden foil-wrapped chocolate bunny that Lindt felt looked very similar to its own product. The Swiss federal supreme court ruled that the Lindt Gold Bunny is a valid registered “shape” trademark, and as a result, other companies can be barred from replicating this shape when selling chocolate products in Switzerland. 

This case hinged on the distinctiveness of the shape of Lindt bunnies. Lindt has been selling a milk chocolate bunny wrapped in gold-colored foil with a red ribbon and a bell around its neck since 1952, and had registered two 3D trademarks for the product in Switzerland, one in black and white and the other in gold, brown, and red. European law says that companies can only register something as a trademark – and therefore protect it from imitation – if it allows consumers to distinguish the specific product from those of competitors. But Lidl argued that the shape of Lindt bunnies is commonplace and non-distinctive, so it should not qualify for registration. 

The Swiss court based its decision that the Lindt bunny shape is a valid trademark on consumer surveys that show shoppers unequivocally associate that shape with Lindt.

This is not the first time the Lindt bunny has ended up in court. Heilemann, a competitor in Germany, started selling golden bunnies in 2018 causing the Swiss chocolatier to sue for trademark infringement. Lindt’s strategy was slightly different in this case, focusing on protecting the color of the packaging rather than its shape. It claimed that the specific golden shade of the foil wrapping is distinctive enough to be protected as a trademark with respect to chocolate bunnies. The German court agreed, again relying on a consumer survey to which 70 percent of respondents said the golden shade in question called to mind Lindt’s products. The court took into account Lindt’s extensive and successful use of this shade and its acquired distinctive character.

Lidl and Lindt's chocolate bunnies
Lidl’s chocolate bunny (left) & Lindt’s chocolate bunny (right)

The Lindt bunny has not always come out on top, however. An earlier 2012 ruling by Europe’s highest court found that the combination of the Lindt Gold Bunny shape and colors (including the pleated red ribbon and attached bell) were not sufficiently different from the way other chocolate products are wrapped, especially rabbits, to warrant an EU trademark.

The Shape of Things to Come

Trademark disputes over the shape of products are hardly novel territory. In many cases, though, courts find shapes to be too commonly used in a specific market to be protected as trademarks. Kit Kat chocolate bars, for example, were the subject of efforts by food producer Nestlé to trademark its four-fingered 3D shape. In the UK, confectioner Cadbury challenged this attempt, successfully claiming that the shape lacked distinctive character. A similar decision was reached by European courts. 

Drinks giant Coca-Cola failed to trademark a recent update of its coke bottle because the shape did not produce a clear and unmistakable impression of exclusively being linked with the U.S. beverage giant. Of course, the original Coca-Cola bottle shape is widely associated with the drinks company and is therefore already registered as a trademark in many countries. Its attempt to register an updated version in plastic, metal and glass as a trademark was rejected in 2014. EU courts said the new version was “devoid of any distinctive character” and not, as Coke tried to argue, “a natural evolution of its famous iconic bottle.” 

Meanwhile, Christian Dior was handed a loss recently, with the Second Board of Appeal of the European Union Intellectual Property Office refusing to register the shape of the brand’s well-known Saddle bag for use in connection with various types of leather goods, including bags, as a three-dimensional trademark, on the basis that the shape lacks distinctiveness – and “would be regarded as ‘typical’” – when used on handbags. 

This is not to say that the shapes of products are difficult to protect. The pyramid shape of Toblerone, believed to be a replica of the Alps’ Matterhorn mountain, for example, is a registered trademark in various jurisdictions and is owned by the U.S. company Mondelez. This was enforced in the UK several years ago when a competitor launched a similarly shaped chocolate bar it called Twin Peaks. At the same time, the familiar shape of the Ferrero Rocher chocolate praline and four of its transparent packaging types have also been successfully registered as trademarks in several countries. This is because the shape is well-known to consumers (again, as revealed by surveys) and the company has a long history of using imagery of these items to distinguish its products.

Protecting Consumers

Non-distinctive shapes usually cannot be registered as trademarks because the law needs to protect the right of all companies to use shapes that are common. Only signs and symbols that help consumers identify products can be registered and therefore, monopolized by one firm. On the other hand, shapes that have been used regularly and for a long time by a variety of manufacturers should not be protected because they do nothing to help people make educated purchase choices. Also, the monopoly offered to trademark owners can be perpetual. Registrations can be renewed every ten years as long as fees are paid. So, being able to forever monopolies common product shapes such as chocolate bunnies could have a negative and lasting impact on competition, although decisions can be subject to legal challenge.

Trademark disputes about product shapes will keep happening and courts should continue to use consumer surveys to come to decisions about who, if anyone, owns certain product shapes. As we have seen, this will not prevent judges from different jurisdictions from reaching different decisions over the same cases, but it will at least keep consumer protection uppermost in mind when making these judgements.


Enrico Bonadio is a Reader in Intellectual Property Law at City, University of London. 

Alina Trapova is an Assistant Professor in Law and Autonomous Systems at the University of Nottingham. (This article was initially published by The Conversation.)

As part of its deadly assault on Ukraine, Russia has taken the rare step to use intellectual property rights as a war tactic. In early March, the Russian government issued a decree saying that Russian companies are no longer obliged to compensate owners of patents, utility models, and industrial designs from “unfriendly” countries, namely western states who have issued sanctions against Russia, including the United Kingdom and United States. 

This means that Russian businesses can use intellectual property, such as patented inventions or fashion designs, without having to pay or seek the consent of the rights holders. Affected companies cannot enforce their patents and designs against Russian imitators. This effectively legalizes intellectual piracy in a country already known for failing to adequately protect intangible assets. Last year, Russia was added to a U.S. government “priority watch list” of countries which do not sufficiently protect US intellectual properties.

Vladimir Putin’s move is clearly a reaction to the west’s economic sanctions and suspension of Russia’s trade privileges. It is also an answer to many multinational companies’ decisions to cease doing business with Russian companies. Sanctions and boycotts have massively affected the Russian economy to the extent that the country is now on the verge of bankruptcy with interest rates having doubled. The stock market has remained closed for weeks and the ruble has fallen dramatically.

Unprecedented attack on intellectual property

The suspension of intellectual property rights as an economic weapon in the context of a conflict is unprecedented, at least in recent decades. Historical examples date back to the first world war, when the U.S. introduced the Trading With the Enemy Act. This act seized copyright and patents owned by enemy countries, including the patent to aspirin, famously a German invention. Following the war, the Aspirin trademark owned by the German pharmaceutical company Bayer was given up to the U.S., France, UK, and Russia, as part of Germany’s war reparations agreed in the Treaty of Versailles. 

Russian officials have hinted that other intellectual property rights owned by western countries may be soon restricted, including software and trademarks. This could allow local entrepreneurs to appropriate and exploit – without permission and for free – brands such as McDonald’s. One Russian restaurant chain has even recently adopted, and applied to register locally, a logo very similar to the famous golden arches. The sanctions have also led a Russian judge to dismiss a copyright and trademark infringement lawsuit brought by the British company that produces animated series Peppa Pig. Andrei Slavinsky said in court that the “unfriendly actions of the United States of America and affiliated foreign countries” influenced his decision. 

Russia Intellectual Property
image via @JoshGerben

Ukraine, for its part, has not been inactive in this intellectual property battle. Its ministry of defense recently hacked and leaked confidential documents it claimed to have taken from a Russian nuclear power station.

Does it violate international law?

Russia’s suspension of patents and other intellectual property rights owned by western companies may violate international treaties which protect these assets at global level. All countries of the World Trade Organization (“WTO”) need to respect these laws and guarantee that foreign businesses can enforce intellectual property rights against imitators.

Countries damaged by the Russian measure may bring Russia to a WTO court and ask for additional sanctions to be imposed. This would again hit Russian businesses, especially those which rely on brands and patented technology, as well as the creative industry sector. The only way Russia could justify the measure would be to rely on a security exception made available by the WTO itself. This exception allows countries to take any action they consider necessary to protect their essential security interests in times of war. But it has never been invoked by any state in the context of an armed conflict, and therefore never tested before the WTO judges.

If Russia is expelled from the WTO club, as has been proposed, that would, paradoxically, insulate it from global intellectual property challenges. No country would be able to bring Russia before a court of an organization it is no longer a member of. These are predictions of what could happen if the war continues. It goes without saying that a prompt end to the conflict may instead relax the tension between the west and Russia, and put an end to the current intellectual property battle.

Enrico Bonadio is a Reader in Intellectual Property Law at City, University of London. Alina Trapova is an Assistant Professor in Law and Autonomous Systems at the University of Nottingham. (This article was initially published by The Conversation.)