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3D trademarks strengthened by Federal Court of Justice of Germany

Federal Court of Justice of Germany strengthens position of good-shaping trademarks by suspending the deletion of two three-dimensional square packaging trademarks for chocolate bars of the chocolate manufacturer "Ritter Sport"

With the recently published decisions of October 18, 2017 (File no. I ZB 105/16 and I ZB 106/16), the Federal Court of Justice of Germany (BGH) annulled the deletion of two three-dimensional square packaging trademarks for chocolate bars from the chocolate manufacturer "Ritter Sport" ordered by the Federal Patent Court (BPatG), thereby strengthening three-dimensional trademarks.

1. Course of the procedure

The well-known chocolate manufacturer "Ritter Sport" registered two three-dimensional shape marks as signs which have acquired distinctiveness by intensive use for the goods "chocolate bars" (among others), at the German Patent and Trademark Office (GPTO):

Both registered trademarks (registrations numbers: DE 2913183 and DE 39869970) show the front and back sides of a neutral square package with a square packaging body, two laterally serrated closure tabs, and a transverse locking tab on the back side.

A competitor of "Ritter Sport" applied for the deletion of the trademarks with the GPTO. The GPTO then rejected the competitor's cancellation requests.

With the decisions of November 4, 2016, the 25th Senate of the Federal Patent Court (25W (pat) 78/14 and 25 W (pat) 79/14) denied the capacity of the signs to constitute trademarks, as these trademarks consist exclusively of a form resulting from the nature of the goods themselves.

2. Federal Court of Justice decision: Square shape is not an essential functional characteristic of chocolate

With the current decisions, the Federal Court of Justice has now annulled the decisions of the Federal Patent Court and referred the case back to the Federal Patent Court for decision.

The Federal Court of Justice determined that the form of the goods or the equivalent packaging form is only induced by the nature of the goods itself if it comprises essential functional characteristics of the category of goods, which the buyer would then also expect from the goods of other suppliers of the same category of goods. It is not relevant whether the respective form is essential for the function of the respective goods or whether the manufacturer has any scope for an essential personal contribution.

Only the features of use which are crucial for the buyer are relevant. Essential features of the form which enhance the packaging, storage, or transport processes are advantages for the manufacturing or sales process. However, these are not beneficial for the buyer.

A trademark can only be denied if the features of the form (i.e., the square form of the chocolate bars) are typical for the use of the relevant goods and are necessary for the typical use of the goods (consumption of chocolate). Advantages which result from untypical constellations of use – in this case, the carrying of chocolate bars in jacket pockets for consumption on the road – do not constitute essential usage properties.

The Federal Patent Court has not yet decided if the "Ritter Sport" trademarks are nevertheless to be refused, as they only consist of a certain form adding a certain value to the goods.

3. Practical Tips

After several decisions, particularly by the Court of Justice of the European Union, confirming the deletion of goods-shaping trademarks, the decisions by the Federal Court of Justice run contrary to these tendencies. They instead strengthen the position of good-shaping trademarks and increase the options for companies to protect their goods and product packaging.