Background

Since 1996, and 2001 respectively, "Ritter Sport" has been the proprietor of two three-dimensional square shaped trademarks, protected for "chocolate bars". In 2010, two applications for cancellation were filed against these trademarks at the German Patent and Trademark Office (GPTO). However, the GPTO rejected these requests as being unfounded. According to the GPTO, the trademarks neither consisted exclusively of a shape which is determined by the nature of the goods themselves, nor would the square shape give the product an "essential value", preventing it from being registered as a trademark. These two grounds for cancellation brought forward by the applicant were thus initially rejected.

However, following the applicant's appeals, the Federal Patent Court granted the cancellation requests and ordered the cancellation of the trademarks. The trademark owner thereupon filed a legal appeal with the German Federal Court of Justice - with success! The decisions of the Federal Patent Court were overturned, and the proceedings were referred back to the Federal Patent Court. In the opinion of the Federal Court of Justice, Sec. 3 (2) No. 1 of the German Trademark Act was not fulfilled, according to which a trademark is excluded from registration if it consists exclusively of a shape that is determined by the nature of the goods themselves.

The Federal Patent Court, which had initially affirmed the existence of this ground for cancellation - and did thus not consider the applicant`s second ground for cancellation – had then to examine whether the square shape of the chocolate gave the product an "essential value", as claimed by the applicant. In its second decisions, the Federal Patent Court rejected this second ground for cancellation as being unfounded. The subsequent appeals, this time lodged by the applicant, had to be decided again by the Federal Court of Justice (Ref. I ZB 42/19 and I ZB 43/19).

Decisions

The Federal Court of Justice this time confirmed the view of the Federal Patent Court and stated that the registered trademarks did not consist exclusively of shapes which give an essential value to the product. According to the Court, the basic square shape of the packaging could serve as an indication of origin to the consumer, so that the latter might associate the chocolate with a particular company as well as certain expectations of quality.

However, this would be irrelevant for the case at hand. The shape of the chocolate packaging could only be denied protection as a trademark under Sec. 3 (2) (3) of the German Trademark Act if it gave "an essential value" to the product. The Federal Court of Justice clarified that the examination of this ground for cancellation depended, among other factors, on the type of the corresponding category of goods, the artistic value of the shape, significant price differences compared to similar products and how the shape differed from other shapes used on the market.

Overall, the decisive factor would be whether it was apparent from an objective point of view that it was precisely that shape which determined the consumer`s decision to purchase the product. In the present case, the Judges of the Federal Court of Justice did not see any evidence for this assumption, and therefore dismissed the appeals. As a result, the applications for cancellation were now finally dismissed as being unfounded.

Conclusion

Generally speaking, the packaging of goods can be protected as a three-dimensional trademark if it is "special". This criterion is subject to strict requirements in order to prevent monopolies.

The ruling of the Federal Court of Justice provides some legal certainty; however, it will still remain difficult to successfully register a pure product packaging as a 3D shape trademark.

The square 3D trademark of "Ritter Sport" was originally registered based on Sec. 8 (3) of the German Trademark Act ("secondary meaning") – namely based on its reputation and the fact that it had become established in the trade as a result of its use for the goods for which the application was filed. It should be noted, however, that this would not have been possible if the essential obstacle of Sec. 3 ( 2) had been applicable.

Authored by Yvonne Draheim