Delays in the Copyright Directive implementation, and news from the Lindt Gold Bunny

Good morning everyone,

Fall is slowly starting to creep in. Hope you enjoy your weekend. For today’s IP news:

23 Member States face legal action over delays in copyright Directive implementation

The European Commission is starting to take action against MS which have failed to implement the new copyright Directive into their national law. These countries failed to meet the June 7 deadline to deal with this matter.

In an announcement, the Commission said it has launched an official infringement proceeding against 23 countries for missing the June deadline to comply with EU rules on copyright.

“The Commission has requested Austria, Belgium, Bulgaria, Cyprus, Czechia, Denmark, Estonia, Greece, Spain, Finland, France, Croatia, Ireland, Italy, Lithuania, Luxembourg, Latvia, Poland, Portugal, Romania, Sweden, Slovenia and Slovakia to communicate information about how the rules included in the Directive on Copyright in the Digital Single Market (Directive 2019/790/EU) are being enacted into their national law,” the Commission’s statement reads.

“As the Member States above have not communicated national transposition measures or have done it only partially, the Commission decided today to open infringement procedures by sending letters of formal notice.”

The EU’s infringement procedures are clearly laid out:

Once the Commission sends formal notices requesting information on why that happened, MS have two months to respond. If responses are considered unsatisfactory, the Commission may send something called a “reasoned opinion”.

This is a formal statement that the country is in breach of EU law and needs to comply within a specific time period, usually two months. If the country fails to comply within this period, the Commission has the option to take the matter to the EU Court of Justice, where it could request the imposition of penalties.

Trademark protection for Lindt’s gold bunny

The plaintiffs (Lindt & Sprüngli group) have been offering the golden foil bunny in Germany since 1952 and in the current shade of gold since 1994.

The defendant is also a manufacturer of chocolate products, that marketed a chocolate sitting bunny in a gold-colored foil during the 2018 Easter season.

In the light of this event, Lindt claimed that they are the owner of the Golden bunny trademark, hence, the defendant was, allegedly, infringing its trademark by selling their own version of the chocolate bunny.

After a few back and forth in Court, the Federal Court of Justice allowed the plaintiffs' appeal and referred the case back to the Court of Appeal for a new hearing and decision.

Indeed, the Court considers that Lindt has proven that the golden hue of the Lindt Gold Bunny has acquired a reputation as a trademark for chocolate bunnies within the relevant public. Due to the degree of association, the Court considered that there seem to be signs indicating that there is a high degree of confusion amongst customers between these two golden bunnies. In addition, the fact that the gold tone is used together with design elements of the Lindt Gold Bunny which are also known to the public (sitting bunny, red collar with golden bell…) does not argue against a reputation of the gold tone. All these elements could point in the direction of a potential infringement.

In the reopened appeal proceedings, the court of appeal will have to examine whether the defendant infringed the plaintiffs' use mark on the gold tone of the Lindt Golden Bunny by marketing its chocolate bunnies packaged in gold-colored foil.

This is all for this week.