Ritter Sport´s 3D trademark remains registered in Germany

In its recent decision of 18 October 2017, the German Federal Court of Justice (Bundesgerichtshof) held square-shaped chocolate packaging eligible for protection as three-dimensional trademarks and annulled two previous rulings of the German Federal Patent Court (BPatG). Consequently, the cases are remitted back to the German Federal Patent Court.

Source to the photo.

Background of the case

For years Ritter Sport have been well-known for its colorful square-shaped chocolate bars, originally inspired by the idea of practically shaped chocolate bars fitting to the pocket of a sports jacket. In 1995 and 1998, the German Patent and Trade Mark Office (GPTO) accepted the square-formed chocolate packaging shapes as 3D trademarks in class 30, namely the German trademarks no. 39869970 and no. 2913183, depicted below.

 No. 39869970             No. 2913183

Later in 2011, two declarations of invalidity against the trademarks were filed, but no grounds for invalidation were found. However, the dispute continued and appeals to the German Federal Patent Court were successful. In its decisions 2016 - 25 W (pat) 78/14 and 2016 - 25 (W) pat 79/14 on 4 November 2016, the German Federal Patent Court declared the trademarks invalid, as it found the square-shape to be exclusively due to the nature of the goods themselves, and thus falling under the Section 3(2) no. 1 of the German Trademark Act, implementing the Article 3(1)(e) of the European Union Trademarks Directive 2008/95/EC.

Nevertheless, the parties continued further to the next instance, and on 18 October 2017 the German Federal Court of Justice took an opposite standpoint and ruled in favor of the three-dimensional trademarks.

  Decision

In the core of the dispute was the question whether the square-shaped form resulted from the nature of the good itself. According to the German Federal Patent Court, the Section 3(2) no 1 of the German Trademark Act has to be applied regardless of the fact that the trademarks are subject to the packaging of the product and not the product itself, as the shape of the product underneath the package was either way clearly recognizable. Furthermore, the BPatG referred to the Tripp Trapp -case (C-205/13)  of the Court of Justice in The European Union (EUCJ) in its decision. According to the Tripp Trapp-case, the rationale of the grounds for refusal of registration laid down in Article 3(1)(e) of the Trademarks Directive 2008/95/EC is to prevent trademark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors. With respect to this, the German Federal Patent Court held that the square-shape of the chocolate bar constitutes an essential characteristic, which consumers would be likely to pursue in the products of the competitors. As a practical example, the Federal Patent Court pointed out the convenience resulting from the square-shape compared to a regular rectangle-shape when putting the chocolate bar into a pocket.

The German Federal Court of Justice applied a completely different view. The Court found that the square-shape of the package did not constitute an essential functional characteristic for chocolate, following that it was unnecessary to answer the question of whether the Section 3(2) no. 1 of the German Trademark Act applied to the case. Thus, Ritter Sport´s three-dimensional packaging shape trademarks remain valid, and the cases are remitted to the BPatG.

As a result, the square-shaped chocolate bars will remain registered and thereby exclusive to Ritter Sport in Germany. The decision of the Bundesgerichtshof has not been published yet, but the German press release of the Bundesgerichshof can be found here.