Easter, the law and chocolate bunnies

The Easter holidays are upon us. As we spend it with our families, we are surrounded not only by traditional Easter attributes (such as basil, Easter eggs and sugar lambs), but also by newer ones, the result of the work of marketers and consumer preference researchers. This is a constant trend. For at least 30 years, no one in the country has been surprised by the ‘invasion’ of fizzy drink adverts with Father Christmas at Christmas. The chocolate Easter bunnies provided by a growing number of manufacturers are also no longer surprising. This is not surprising, after all, for most people the bunny is a symbol of Easter, and chocolate versions of the bunny are becoming as popular as chocolate Santas. The confectionery market itself is growing.

In 2021, the statistical Pole ate 5.2kg of chocolate. This represents an increase of approx. 30% over the past 10-20 years[1]. It is therefore no surprise that confectionery manufacturers are outdoing each other in the battle for customers, including by offering seasonal sweets deeply rooted in the festive season. This market too is increasingly competitive. The increased competitiveness often translates into the frequency of disputes, including chocolate bunnies.

The dispute over the ‘right to a chocolate bunny’ before the Polish Competition and Consumer Protection Court was certainly a loud one. L., a Swiss manufacturer of confectionery (including, of course, chocolate Easter bunnies) filed a lawsuit against T, a Polish entrepreneur operating in the same industry, who also marketed a chocolate Easter bunny. The Swiss demanded that the court order an injunction prohibiting T. from offering chocolate bunnies shelfing existing copies of the long-eared treat from the market and issuing an apology. The claim was based, among other things, on the statement that the defendant’s marketing of chocolate bunnies of the same shape, including their gold-coloured ‘silvering’, constituted an act of unfair competition in relation to L., which holds a registered trade mark in this respect. According to the claimant, the substantive basis for the claims made was the provisions of Articles 3(1), 10(1) and 13(1) in conjunction with Article 18 of the Act of 16 April 1993 on Combating Unfair Competition:

Art. 3. 1. An act of unfair competition is an act contrary to the law or morality, if it threatens or prejudices the interest of another entrepreneur or the customer.

Article 10.1 It is an act of unfair competition to designate goods or services or not to designate them in such a way as to mislead customers as to the origin, quantity, quality, ingredients, execution, suitability, applicability, repair, maintenance or other material features of the goods or services, or to conceal the risks involved in their use.

Article 13. 1. It is an act of unfair competition to imitate a finished product by copying the external appearance of the product by means of technical reproduction if it is likely to mislead customers as to the identity of the manufacturer or the product.

The defendant sought dismissal of the claim although it did not dispute that the external figure of ‘his’ bunny was identical to the external figure of the plaintiff’s one – the parties even used an identical mould, which they purchased separately from each other. In contrast, the defendant disputed the plaintiff’s claims as to the specific shape of the figure of “his” bunny, pointing to the existence of other similar products on the market. On this basis, he indicated that the ‘sitting bunny’ figurine was neither specific nor uncommon.

Therefore, according to the defendant, the plaintiff’s bunny is not distinctive, which is necessary to establish that there is a danger of confusion within the meaning of Article 10 of the Act. The defendant also emphasised that the possibility of misleading customers as to the identity of the manufacturer or the product does not exist if customers are adequately informed about the manufacturer – such as the defendant, which places its own logo on ‘its’bunnies.

The dispute was, by national standards, relatively short-lived: ‘only’ three and a half years.

In a final judgment (IACa 229/08), the Poznań Court of Appeal agreed with the defendant. Dismissing the action, it mentioned that although the size and form of both bunnies were the same, there were no grounds for assuming that the designation of the golden bunny could mislead consumers as to the origin of the product. It pointed out that the bunny is a universally recognised perennial symbol of Easter and the seated position in which the bunnies of both parties are depicted is “a form copied from nature”. The representation of the figure of the little bunny in realistic terms cannot, as a rule, be appropriated by anyone. The prohibition of unfair competition cannot lead to preventing similar products from entering the market. In the opinion of the Court, a very important circumstance distinguishing the competing goods is clearly the word mark “T.”, placed on the side of the defendant’s bunny, which does not give any grounds for association with the word mark “L.” on the plaintiff’s one.

The essence of the dispute was therefore whether the common features of the products at issue constituted an individual characteristic of the product “as such”, or whether they were individual to a strictly designated specific product of a specific manufacturer – and therefore individual, with distinctive capacity.

Such labelled criteria also guided the court deciding the ‘mayonnaise war’.

In this dispute, the producer of one of the popular types of “K.” mayonnaise was issued with a court injunction prohibiting its competitor from marketing mayonnaise whose label referred to the colour scheme of the “K.” mayonnaise label. The court held that the colour combination in question was not characteristic of mayonnaise packaging as such (as, for example, the red colour for ketchup packaging and the brown colour for mustard packaging), but of the plaintiff’s specific product, capable of misleading as to the identity of the product.

For similar reasons, protection was granted to the distinctive pink packaging of ‘V.’ brand household chemical products. This was because, in the opinion of the adjudicating court, pink, which is not a typical colour of packaging for products of this type, also has the capacity to distinguish the product bearing it.

However, this does not mean that in every case the court’s decision can be predicted in advance. Just before last Easter, the food industry was alive with the news of a court ban on chocolate bunnies offered by a pan-European grocery chain. This came on the back of a well-known ruling by Poznań-based L., which had been awarded with the same ban before a Swiss federal court that it had unsuccessfully fought for in Poland, this time successfully citing the possibility of misleading consumers about the identity of the products. Although, also in this case, the shape of the bunnies in litigation was also “taken from nature”.

This illustrates vividly how malleable and open to the arguments of the parties the European competition and consumer law system remains. Rarely has so much depended on the attorneys of the disputing parties.

Authors:

Jarosław Pawłowski, Advocate

Bartosz Niewiadomski, legal assistant

[1] [LINK]