Of Cherry Blossoms, Tulips & Bunnies: Lessons From Three Trade Mark Disputes

Cherry blossoms, tulips and bunnies are timeless emblems of spring, bringing colour and warmth to a season widely cherished for its pleasantness. This article delves into 3 separate trade mark disputes across 3 different jurisdictions, each centred on a different emblem of cherry blossoms, tulips and bunnies.

Cherry Blossoms - Mariage Frères’s “SAKURA SAKURA!” Trade Mark in the UK

In 2014, French tea house Mariage Frères, Société Anonyme (“Mariage Frères”) applied to register the “SAKURA SAKURA!” mark in the UK, covering food items including tea and tea-based beverages. 

Singapore-established TWG Tea Company Pte Ltd (“TWG”) opposed this mark on a number of grounds, including (i) “sakura” means the Japanese cherry tree and cherry blossom derived from the tree, and is widely used by other traders in tea and related goods in the UK, (ii) the mark lacks distinctiveness since it is descriptive of the relevant goods consisting of or flavoured with cherry blossom, (iii) use of the mark for tea and related goods which do not consist of or are flavoured with cherry blossom, would be deceptive, (iv)  Mariage Frères’s attempt to register a descriptive term whilst being aware of TWG’s and other traders’ cherry blossom tea sold in the UK is a calculated attempt to dishonestly disrupt and interfere with others’ legitimate business in the UK, and (v) in the event the mark was found to be distinctive, TWG owns substantial goodwill and reputation in “SAKURA SAKURA!” since it has been selling tea under this mark since at least December 2009, meaning that use of this mark would be a misrepresentation to the public and result in damage to TWG’s goodwill. 

The Hearing Officer concluded that the tautology present in the mark together with presence of the exclamation mark (i.e., “SAKURA SAKURA!”) adds at least a spark of distinctive character over and above merely being a phrase or word that designates a characteristic of the relevant goods. Overall, the opposition failed except partially, where Mariage Frères is to insert a limitation to certain goods (such as tea and tea-based beverages) in the class 30 specification of the mark, that they are made or flavoured with, or containing cherry blossom. 

TWG appealed, and the Appointed Person subsequently allowed the appeal on certain grounds, including that “SAKURA SAKURA!” would be perceived by an average consumer as merely to provide information for certain goods (such as tea, tea-based beverages, non-medicinal infusions and dried plants and flavourings), instead of as an indication of origin of the same. As such, the mark is not inherently distinctive, and thus refused registration for the aforementioned goods. 

Tulips – AGN International’s “AGN TULIP” Trade Mark in India 

Suparshva Swabs India (“Suparshva”) is a manufacturer and trader of cotton buds and cotton balls since 1999, and subsequently forayed into other products such as wet wipes. It has obtained multiple registrations for the mark “TULIPS” in various classes in India. On the other hand, the defendants (collectively “AGN International”) are involved in the business of perfume and cosmetic products, specifically fragrances, under the mark “AGN TULIP”. 

In 2021, Suparshva discovered AGN International’s “AGN TULIP” perfumes being sold in both online and offline markets. Suparshva initiated a suit seeking permanent injunction to restrain AGN International from using the mark “TULIP” or “AGN TULIP” in relation to perfumes, cosmetics and allied goods. Additionally, Suparshva sought a temporary injunction to restrain AGN International’s use of the mark, pending disposal of the suit. The Commercial Court refused Suparshva’s application for temporary injunction. Suparshva subsequently appealed before the Delhi High Court.

According to Suparshva, AGN International has dishonestly adopted “AGN TULIP” which was identical or deceptively similar, since “TULIP” was a dominant part of this mark. Such adoption was mala fide, dishonest and motivated by an intent to trade and ride upon the goodwill established by Suparshva. As such, there is infringement of Suparshva’s registered marks, passing off, dilution, and violation of Suparshva’s common law rights. 

The Delhi High Court held as follows, in dismissing Suparshva’s appeal:- 

• there can be no action for trade mark infringement between two registered trade mark proprietors, meaning that Suparshva can only rely on passing off against AGN International;
• to establish passing off, Suparshva must prove goodwill as the first element. However, Suparshva’s principal use of “TULIPS” is for cotton buds, tissues and swabs, which does not extend to perfumes or fragrances;
• Suparshva failed to demonstrate consumer association of “TULIPS” with perfumes or fragrances prior to AGN International’s adoption/ registration of “AGN TULIPS” in 2010;
• without proof of goodwill and likelihood of deception in the relevant line of trade, Suparshva’s case of passing off fails;
• the fact that goods may be displayed within the same outlet or even on the same shelf does not automatically extend goodwill across distinct product categories; and
• finally, the mark “TULIP” does not qualify as a well-known mark.

Ultimately, AGN International is not stopped from using the “AGN TULIPS” mark in India. Strong market recognition (and thus, goodwill) in one product category does not automatically extend to another product category, even if in the same trade mark class. 

Bunnies – Lindt’s 3D Trade Marks in Switzerland 

Chocoladefabriken Lindt & Sprüngli AG (“Lindt”) is a renowned Swiss chocolatier, and has marketed and continues to market its chocolate bunny product wrapped in gold-coloured foil since 1952. Lindt is also the proprietor of 3D mark registrations of a bunny for chocolate-related goods in class 30 in Switzerland – one with no colour claim and the other with claims of colours gold, brown and red.  

Lidl Schweiz AG and Lidl Schweiz DL AG (collectively “Lidl”) are involved in distribution of food and non-food items via retail stores in Switzerland, and are part of the wider Lidl Group network. Lidl was offering chocolate bunny products in Switzerland, which were similar to Lindt’s.

Lindt brought a claim, on the basis that Lidl’s chocolate bunny products closely resembled the shape and design of their chocolate bunny products sold in Switzerland, under both trade mark law and unfair competition Law. Lindt sought reliefs including to prohibit Lidl from dealing with chocolate bunny products in a specific shape and design irrespective of colour, and/or in a specific shape and design including gold-coloured foil, as well as for destruction of the chocolate bunny products in Lidl’s possession. The Swiss Commercial Court dismissed this claim. 

Upon appeal by Lindt, the Federal Supreme Court upheld the appeal, finding that there was indeed likelihood of confusion. According to the Federal Supreme Court, Lindt’s 3D marks are distinctive, not inherently, but due to extensive prior use. The consumer survey evidence submitted by Lindt in support of claims of acquired distinctiveness, was accepted. It was not necessary to examine whether Lidl has adopted any “originally striking distinctive character” of Lindt’s 3D marks. Instead, likelihood of confusion was primarily assessed based on acquired distinctiveness.  Also according to the Federal Supreme Court, likelihood of confusion was not affected by the label “FAVORINA” printed on Lidl’s chocolate bunny products. Purchasers of foodstuffs would typically choose products known to them, often on the basis of shape and features, without necessarily referring to the label to verify that they have not chosen a competing product.

Likelihood of confusion was affirmed not only on Lindt’s 3D mark registered without a colour claim, but also for their 3D mark registered with the relevant claims of colours. The broad, averagely attentive public would not be able to distinguish in their memory the slightly divergent gold tones of Lindt’s 3D mark and Lidl’s chocolate bunny products, nor do the different colours of the bows and pendants or the wine-red color of the “FAVORINA” sign on Lidl’s chocolate bunny products result in sufficient distinctiveness.

Lidl was ordered to stop selling its chocolate bunny products in Switzerland, and to destroy the remaining chocolate bunny products. Destruction was not disproportionate, given that Lidl could melt the chocolate and repurpose the same. 

Conclusion

Mariage Frères’s “SAKURA SAKURA!” mark in the UK was successfully opposed because it lacked inherent distinctiveness. Suparshva did not succeed in its passing off claim because it has not established sufficient goodwill for products relevant to AGN International’s use of the “AGN TULIP” mark. Lindt on the other hand was successful in enforcing its trade mark rights against Lidl, as a result of distinctiveness acquired for its 3D marks from longstanding prior use and consumer recognition. 

The lesson is clear for brand owners – extensive genuine use of your mark does help strengthen your position and rights against another party, even if the mark lacks inherent distinctiveness at the start.