Shaped Charges: The Battle of the Golden Bunnies

Swiss court orders Lidl to melt down its chocolate bunnies for infringing Lindt's Gold Bunny trademark

Switzerland’s Federal Supreme Court has ordered German discount retailer, Lidl, to cease selling its "copycat" rabbit-shaped chocolate in Switzerland and to destroy its stock.

In its decision to overturn last year's ruling by the Swiss Commercial Court for Lidl, Switzerland's highest court took account of surveys submitted by Lindt & Sprüngli which showed that its Golden Bunny was well known to the public and the real risk of public confusing the products for each other.

The Supreme Court's decision shows that trademark protection for 3D designs is an important weapon in the fight against copycats wishing to exploit a business's hard earned reputation for its product.

Lindt & Sprüngli has registered the shape of its Golden Bunny as a trademark in various countries and has fought hard to protect the design of one of its best selling products.

Did you know the Malaysian Trademarks Act 2019 allows the registration of shapes as trademarks, including shapes of confectionary and baked goods (see below)?

Talk to us if you're worried that someone may be copying your masterpiece or if you're worried that your products could be infringing someone else's trademark or copyright.

Can we trademark generic words like "LOVE" and "THE"?

Recently, the decision of the UK Intelectual Property Office to allow the registration of the word "Cariad" (Welsh for "love") as a trademark for candles has been widely criticised as this may prevent other businesses from using a relatively generic term on their products. Across the pond, the Ohio State University successfully registered the word “THE” in the United States for t-shirts, baseball caps and hats. In 2020, the US Supreme Court decided that a relatively generic domain name - "Booking.com" can be trademarked. And in Malaysia, local celebrity Neelofa's mum landed in hot soup when she attempted to register "Harimau Menangis" (a common Thai dish) as a trademark.

With businesses hellbent on registering every available word in our lexicon as a trademark, are we not in danger of running out of words to use?

Well, while the above examples are somewhat worrying, cases like this are relatively rare. In fact, numerous attempts to register generic words/phrases as trademarks have failed, e.g. Subway's failed attempts to trademark the word "footlong"; the former POTUS's attempt to trademark the phrase "you're fired".

Generally, you can’t register a generic/descriptive word as a trademark. That is unless you have used your trademark so extensively that when consumers only associate the said generic/descriptive word with your brand (e.g. Body Shop, Kentucky Fried Chicken, The Weather Channel). The reason is simple. Registration gives you exclusive right (monopoly) to use the trademark, and if you are allowed to register a generic/descriptive sign, no one else can use it! Imagine if I register the word “restaurant” as a trademark for restaurant services, no one can use that word to describe their f&b outlet without infringing my trademark rights. Accordingly, the more generic/descriptive a trademark, the harder it is to register.

For example, it took Booking.com 8 years and numerous appeals to get their trademark registered. Ohio State University's registration of the word "THE" took close to 4 years, and Neelofa's mum had to withdraw her trademark application following public outcry.

On the other hand, brands which are invented, arbitrary, or fanciful are comparatively easier to register as trade marks and don’t rely so much on consumer recognition in order to be registrable.

USE IT OR LOSE IT: How Apple lost its THINK DIFFERENT trademark in the EU

In a recent judgement, the General Court of the EU ruled that Apple’s trademark registration in the EU for the slogan “THINK DIFFERENT” shall be revoked as the tech giant hasn’t been using the slogan on its products.

The judgement follows applications by Swatch in 2016 at the European Union Intellectual Property Office (EUIPO) to revoke Apple’s trademark registration for the slogan on the grounds that Apple had not been genuinely using the trademark for an uninterrupted period of five years.

Swatch’s applications were accepted and Apple’s trademark was revoked by the Cancellation Division of EUIPO revoked Apple’s trademark registration. Unhappy with EUIPO’s decision Apple brought three actions before the General Court of the EU.

Unfortunately for Apple, the General Court agreed with the EUIPO that Apple has not put to genuine use its “THINK DIFFERENT” slogan on its products. The General Court’s decision may mean that any businesses in the EU may now use the slogan on their own products.

This case shows that trademark owners must use their trademarks after they are registered, otherwise, the trademark registrations can be revoked for non-use. In Malaysia, any trademark registration can be revoked by the court if it is not use in good faith for 3 years after it is registered.