The story of part German/part Danish company Haribo's signature gummy bear is a fascinating tale of trade mark protection and legal disputes in the food and drink industry.
Originally created in 1922 as the ‘dancing bear’ and now known as the GOLDBEAR, the design of the GOLDBEAR has been subtly changed since it hit the market in 1922 before settling on its present shape in 1978.
The EUIPO's decision in October 2023 recognised Haribo's GOLDBEAR as a distinctive 3D trade mark. However, you can still add new angles even though the topic has already been widely covered by experts. Let’s have a look into some new 2024 decisions to see how well Haribo’s 3D trade mark is protected.
EUIPO'S DECISION FROM 2023
In October 2023, EUIPO recognised Haribo's GOLDBEAR as a distinctive 3D trade mark:
This decision is important because it cements Haribo's right to protect its iconic gummy bear shape from copying in any form.
The EUIPO concluded that the mark met the required distinctiveness, as it was recognisable by the public as originating from Haribo. This therefore ensured its protection as an EU trade mark. This decision highlights the necessity of a minimum level of distinctiveness for figurative trade marks without requiring new originality.
NEW DECISION FROM 2024 AND RUNNING DISPUTES
However, a new EUIPO Board of Appeal decision in February 2024 regarding Haribo's second trade mark application for the ‘bear outline’ adds another layer to the story.
This decision is important as it highlights Haribo's ongoing efforts to protect its brands. In this decision, EUIPO assessed that even the contours of Haribo's bear possess a sufficient degree of distinctiveness:
This means that even the most minimalist versions of the bear are recognisable as Haribo GOLDBEAR products. This significantly strengthens their trade mark protection.
In addition to these decisions, there have been several recent infringement cases concerning Haribo's 3D trade mark. These cases underscore the challenges Haribo faces in protecting its iconic shape:
Haribo vs Cmix: In the case against Cmix, decided by a Korean court in April 2024, Haribo accused Cmix of producing and marketing gummy bears that resemble Haribo's bear design:
The court evaluated the extent to which the bear shape was recognised as a symbol of Haribo’s products in contrast to its status as a generic shape in the industry. It was determined that the bear shape, in this context, was a distinctive trade mark for Haribo and that Cmix’s gummy bears infringed the trade mark.
Haribo vs Meridius Group: A decision from the Swedish Patent and Market Court from April 2024 followed Haribo’s challenge that Meridius' use of a similar bear shape on their products. The Court found that Meridius' use of a bear-shaped gummy:
was similar to Haribo's registered trade mark which could potentially cause confusion among consumers. Therefore, the similarity was deemed sufficient to constitute trade mark infringement. The Court also ruled that Meridius' product could mislead consumers into associating it with Haribo's reputable products, thus gaining an unfair advantage. Meridius did not reply in the matter.
It is worth adding that Meridius’ gummy bears were being marketed as SLEEPY’S, sleeping aids containing 3 mg melatonin per bear.
Affirming the distinctiveness of Haribo's gummy bear shape once again, this case also highlights Haribo's continued efforts to safeguard their trade marks. The Court further found that the evidence presented by Haribo proved that the 3D trade mark of Haribo is a well-known trade mark in Sweden. Haribo presented three market surveys, each with 1,000 to 2,000 respondents, showing that a significant number of people associated the 3D trade mark with Haribo.
The Haribo gummy bear cases highlight the importance of obtaining robust and enforceable trade mark protection in the face of many iconic brands’ efforts to defend their intellectual property.
Furthermore, many of these cases - most particularly the Swedish decision prohibiting the sales and marketing of Meridius’s SLEEPY’S - underline the potential alternative or supplemental routes to counter infringing products.
As described above, the SLEEPY’S bears from Meridius contain 3 mg of melatonin per bear. Under Swedish law, this makes the bear a pharmaceutical product. Meridius holds no approval from the relevant Swedish authorities to market such products so, alongside the Court order from the Patent and Market Court, Meridius also received a cease order from the Swedish Medical Products Agency.
At Potter Clarkson, we specialise in helping firms protect and defend their trade marks and market position following the routes available in each case, ensuring your brand remains secure in a competitive market. If you would like to discuss how best to protect the branding and appearance of your product lines, please contact us today.
