Gummy Bears With a Twist Are Still Gummy Bears
The confection giant Haribo has a long history of aggressively protecting their intellectual property, and none more so than their iconic gummy bear. Currently, the German company holds a design trademark for the cute bear shape of the sweet. Unfortunately for a small Spanish business, this could mean danger. The Spanish company “Osito & Co” (Little Bear and Co.) was started by a group of young people who recently graduated university. Their product is a range of alcohol infused gummy bears. The flavors include gin and strawberry, whisky and cola, rum and pineapple, and tequila and lemon. Each gummy bear is about 15% alcohol and 10-15 bears in equivalent to a glass of wine.
Unfortunately for Osito & Co., the claim here seems to have much more ground. Both products are gummy, both products are a similar shape and brightly colored. However, not all hope is lost for Osito. They may claim that their bears are marketed to different consumers (legal drinking age), as well as being clearly marked as containing alcohol. Furthermore, the boozy bears are only available through an online ordering system. Haribo must show that there would be a likelihood of confusion resulting in the appearance of the boozy bears, and that Ostio used the good will of Haribo and its sweets in order to market their product. Haribo seems to be within their rights to request Osito to stop using the gummy bear shape, however, their other request of turning over the entire business and turning over the domain name seem overreaching and like scare tactics.
The young entrepreneurs were concerned to receive a cease and desist letter from Haribo claiming their boozy teddy candies infringed on Haribo’s design trademark. The six-page letter claimed unfair competition citing that the bear shape of the gummies infringed on the trademark. Haribo went even further requesting the transfer of Ositos & Co.’s domain name to protect and defend its intellectual property rights and its image.
This sort of cease and desist letter is fairly common, and Haribo has a long history of being aggressive in protecting their design’s trademarks. Recently, they were engaged in a legal battle with the Lindt chocolate company over the use of a gold covered bear shaped chocolate. Haribo was unsuccessful against Lindt, the court found that although the companies function in a similar market, there was little probability that the consumer would confuse a gummy bear with a chocolate bear.
Although Haribo’s actions can seem like bullying a small independent company, it is important to remember that trademarks can be deemed as “abandoned” or “waved” if it comes to light that the trademark holder allows the trademark to be freely used by others. If the trademark holder is found to abandon their mark, then they lose IP protections for that mark. For a company like Haribo, this would be a huge blow to their protection and would allow bigger, more competitive companies, to come in and use the iconic bear shape. Unfortunately for Osito, it comes at an expense.