WIPO Lex

This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.

Session 1: Emerging Issues in Trademarks

Federal Supreme Court, Switzerland [2022]: Chokoladefabriken Lindt v Lidl, 4A_587/2021

Date of judgment: August 30, 2022
Issuing authority: Federal Supreme Court of Switzerland
Level of the issuing authority: Final Instance
Type of procedure: Judicial (Civin( �br> Subject matter: Trademarks; Enforcement of IP and Related Laws; Competition
Plaintiff: Chocoladefabriken Lindt & Sprüngli AG
Defendants: Lidl Schweiz AG and Lidl Schweiz DL AG
Keywords: Three-dimensional trademark, Likelihood of confusion, Acquired distinctiveness

Basic facts: Chocoladefabriken Lindt & Sprüngli AG (plaintiff and appellant) (hereinafter Lindt) includes in its business activities, inter alia, the manufacture and sale of foodstuffs and luxury foodstuffs, in particular chocolate goods.

Lindt is the proprietor of trademark No. 696955 (below), registered in the Swiss Trademark Register on December 22, 2016, as a three-dimensional trademark with secondary meaning for the Class 30 goods ‘chocolate, chocolate goods, chocolate figures’.

The color of the above mark is not claimed.

Lindt is also the proprietor of trademark No. P-536640, registered on August 17, 2005, as a three-dimensional trademark with secondary meaning for the Class 3 goods ‘chocolate, chocolate articles’. The sign is reproduced in the trademark register as follows (with color claims ‘gold, brown, red’):

Lindt submits that it has marketed the chocolate bunny in gold-colored foil (hereinafter the Lindt bunny) since 1952, in practically unchanged form and design.

Lidl Schweiz AG and Lidl Schweiz DL AG (first and second defendants/respondents) (hereinafter Lidl) include in their business activities, inter alia, the trade in and distribution of food and non-food articles for the Lidl group of companies.

Before Easter 2017, Lidl offered the following chocolate bunny (hereinafter the Lidl bunny) in Switzerland:

On March 30, 2017, Lindt filed a request with the Commercial Court of the Canton of Aargau for the issuance of a super-provisional prohibition against the first respondent. This request was dismissed by the President of the Commercial Court by decision of April 12, 2017.

On December 19, 2018, Lindt filed the following pleas with Commercial Court:

1. That the defendants be prohibited from advertising, promoting, importing, storing, offering for sale and/or selling chocolate bunnies in Switzerland in the shape and design shown in the illustration below, irrespective of the specific color design (hereinafter Claim No. 1).

2. Alternatively, that the defendants be prohibited from advertising, promoting, importing, storing, offering for sale and/or selling chocolate bunnies in Switzerland wrapped in gold-colored foil in the shape and design shown in the following illustration (hereinafter Claim No. 2).

Lindt further requested the destruction of the Lidl gold bunnies in the defendants’ possession (Claim No. 3), the provision of information and rendering of accounts (Claim No. 4), and the payment of a sum as financial compensation (Claim No. 5).

In support of its claim, Lindt argued that the chocolate bunnies marketed by Lidl closely resemble the shape and design of the chocolate bunnies produced and sold by Lindt in Switzerland, in violation of its defensive rights under trademark protection and unfair competition law.

The Commercial Court dismissed Claims Nos. 1-4 and did not consider Claim No. 5, as it was not quantified. In essence, the Commercial Court concluded that there was no potential for confusion between the Lidl chocolate bunnies and Lindt’s trademarked signs, and that there was no unfair affiliation within the meaning of the Federal Act on Unfair Competition.

Lindt requested that the decision of the Commercial Court be set aside and Claim No. 1, or alternatively Claim No. 2, as well as Claims Nos. 3 and 4 be upheld. Alternatively, Lindt requested that the case be referred back to the lower court for a new assessment. Lindt requested that Claim No. 5 be accepted and the case sent back to the Commercial Court for an assessment of financial compensation.

Lidl requested that Lindt’s appeal be dismissed insofar as it is admissible. The Commercial Court requested that the complaint be dismissed, waiving its right to be heard.

Held: The Federal Supreme Court upheld Lindt’s appeal, finding there to be a likelihood of confusion within the meaning of Art. 3(1)(c) of the Federal Act on the Protection of Trademarks and Indications of Source (hereinafter the Trademark Act). Thus, the Federal Supreme Court set aside the decision of the Commercial Court of the Canton of Aargau, referring the matter back to the Commercial Court for further proceedings.

Relevant holdings in relation to emerging issues in trademarks: The Federal Supreme Court noted that Lindt’s marks, even if originally weakly distinctive, have become strong signs as a result of their acquired distinctiveness. That is, Lindt’s marks may not be distinctive by virtue of their originality, but they are distinctive by virtue of becoming well-known through their intensive use.

Because the distinctiveness of the Lindt marks is acquired, it is not necessary (unlike in other cases of Art. 3(1)(c) of the Trademark Act) to examine whether the ‘originally striking individual character’ of the marks has been made part of the contested signs by adopting design elements, because there is no such striking individual character. Rather, likelihood of confusion is primarily to be assessed on the basis of the acquired distinctive character.

Accordingly, the Federal Supreme Court held that the Commercial Court should have concluded that Lindt’s trademarks, as signs that have acquired distinctiveness, leave behind formative memories to which the bunnies marketed by Lidl are strongly and misleadingly related.

The Federal Supreme Court further found that the existence of likelihood of confusion was unaffected by the label ‘FAVORINA’ printed on the Lidl bunnies. The Court noted that particularly in the case of foodstuffs, it cannot be automatically assumed that purchasers acting with average attention will choose products by reading the text. Purchasers will choose products known to them, often on the basis of shape and features, without necessarily consulting a label to verify that they have not chosen a competing product.

Moreover, the Federal Supreme Court held that this finding of likelihood of confusion applies not only to the Lindt mark registered without a color claim (No. 696955), but equally to mark No. P-536640, with color claims ‘gold, brown, red’. According to the Court, the broad, averagely attentive public will not be able to distinguish in their memory the slightly divergent gold tones of the Lindt mark and the Lidl bunnies, nor do the different colors of the bows and pendants or the wine-red color of the FAVORINA sign result in sufficient distinctiveness.

Relevant legislation:
Federal Act of August 28, 1992, on the Protection of Trademarks and Indications of Source,
Arts. 2(a), 3(1)(c), 13(2), 55(1) and 57(2)
Civil Procedure Code of December 19, 2008, Arts. 157 and 168(1)
Federal Act of December 19, 1986, on Unfair Competition