The three-dimensional “square” packaging shape of Rittersport chocolate, which is protected as a trade mark, remains protected according to the BGH (Federal Court of Justice) ruling of July 23, 2020.
Since 1996 and 2001, the two 3D-shape trade marks shown below have been registered as so-called “trade-marked” signs for chocolate bars.
In two different sizes (chocolate bars “Ritter Sport” and “Ritter Sport Minis”), they show the front and back of a neutralised packaging
→ with a square base area and
→ two side closing flaps and
→ another closing flap on the back.
The monopoly on the square shape of the chocolate packaging of the traditional and family-owned company Rittersport from Waldenbuch was attacked by a competitor by way of two cancellation requests before the German Patent and Trade Mark Office (DPMA).
The DPMA had examined both requests for cancellation based on the grounds for exclusion of protection under Section 3 para 2 No. 1 MarkenG (Trade Mark Act) and had initially rejected them as unfounded. If it were up to the applicant, the packaging marks would not be eligible for protection because they consist of a shape that is determined by the nature of the goods themselves.
→ Ground for exclusion from protection under Section 3 para 2 No.1 of the Trade Mark Act:
Signs which consist exclusively of shapes or other characteristic features that are determined by the nature of the goods themselves are not eligible for trade mark protection.
However, the appeal body, in this case the Federal Patent Court (BPatG), affirmed the ground for exclusion and ordered the cancellation of both 3D-shape marks of Rittersport1 .
This assessment of the BPatG already failed to stand up to the BGH in 2017. In response to the trade mark owner’s appeal, the BGH annulled the decisions of the BPatG and referred the case back to the BPatG2. In this respect, the BGH stated that the ground for refusal of protection under Section 3 para 2 No. 1 Trade Mark Law did not apply:
→ Under Section 3 para 2 No. 1, three-dimensional signs can be trade marks. In principle, this also applies to three-dimensional signs which represent the shape of a product. The provision in Section 3 para 2 No. 1 Trade Mark Law excludes from trade mark protection such signs which consist exclusively of a shape that is determined by the nature of the goods themselves. It was not necessary to decide whether in the present cases the obstacle to protection also applied to packaging. The square shape of chocolate bars was not an essential characteristic of chocolate.
The Federal Patent Court was therefore to examine the question left open by it as to whether the further ground for refusal according to Section 3 para 2 No. 3 of the Trade Mark Law was applicable.
→ Ground for exclusion from protection under Section 3 para. 2 No. 3 MarkenG:
Signs which consist exclusively of shapes or other characteristic features which give substantial value to the goods are not eligible for trade mark protection.
The Federal Patent Court then assumed that this further obstacle to protection did not exist either and rejected the applicant’s 2018 complaints3. Now the appeal lodged by the applicant against this decision before the Federal Court of Justice has failed. The Federal Court of Justice dismissed the appeals. The requests for cancellation are not substantiated.
→ The registered trade marks do not consist exclusively of a shape which gives substantial value to the goods.
The only essential characteristic of the trade-marked goods packaging is their square base area. This does not give substantial value to the chocolate bars marketed in the packaging.
The assessment required in that regard is based on criteria such as the kind of category of the goods in question, the artistic value of the shape in question, its difference compared with other shapes commonly used on the market in question, a significant difference in price compared with similar products, or the development of a marketing strategy emphasizing mainly the aesthetic qualities of the goods in question. The ground for refusal applies if it is clear from objective and reliable evidence that consumers’ decision to purchase the product in question is determined to a large extent by that characteristic.
On the basis of the Federal Patent Court’s findings it cannot be assumed that the decision of consumers to buy chocolate bars marketed in square packaging is determined to a large extent by the fact that this particular shape of packaging gives substantial value to the chocolate. The Federal Patent Court found that the square shape of the packaging has no particular artistic value and does not lead to significant price differences compared with similar products. It is true that the trade mark proprietor pursues a marketing strategy in which it uses the square shape of the packaging with the well-known advertising slogan “Square. Practical. Good.” Admittedly, this may lead to the situation that the consumers’ decision to purchase the chocolate is determined by the square shape of the packaging, because they see in it an indication of the origin of the chocolate from a particular company, associating it with certain expectations of quality. But that is not the point. The shape of a product or packaging is excluded from trade mark protection under Section 3 para 2 No. 3 Trade Mark Act only if it gives the product a significant value. In the case of the square chocolate bar packaging at issue here, there is no evidence of this.
BGH decisions of July 23, 2020 – I ZB 42/19 and I ZB 43/19
Source: Press Office of Federal Court of Justice
July 27, 2020
Vanessa Bockhorni
Patent Attorney
1 BPatG – Decisions of 4 November 2016 – 25 W (pat) 78/14
2 Federal Court of Justice – Decisions of 18 October 2017 – I ZB 105/16, BGHZ 216, 208 Square chocolate bar packaging I and I ZB 106/16
3 BPatG – Decisions of 13 December 2018 – 25 W (pat) 78/14