In the opinion of the Federal Patent Court, the registration of a square packaging trademark for Ritter Sport was inadmissible and therefore had to be canceled. However, the Federal Court of Justice has now contradicted this and overturned the two judgments of the Federal Patent Court in its rulings of October 18, 2017 (Ref.: I ZB 105/16 and I ZB 106/16). The square packaging shape is not an essential utility characteristic of chocolate. The ground for refusal pursuant to Sec. 3 para. 2 No. 1 MarkenG is therefore not present.
Ritter Sport registers Quadrat as a trademark
As the trademark owner, Ritter Sport had registered various three-dimensional shape marks as signs enforced by trade for the product “chocolate bars”. The trademark application shows the front and back of a neutral square packaging with a square packaging body. In addition, two lateral serrated closure flaps and a transverse closure flap on the back are recognizable.
Lawsuit by the competition
This meant that other chocolate manufacturers were no longer able to package their chocolate in a rectangular shape. As a result, a competitor manufacturer took action against the registration and applied to the German Patent and Trade Mark Office (DPMA) to cancel the trade mark.
Because the DPMA rejected the cancellation requests, the competitor manufacturer appealed to the Federal Patent Court against the refused cancellation. The packaging shown in the registered trademarks reproduced typical usage characteristics of chocolate bars packaged therein, Section 3 para. 2 No. 1 MarkenG.
BGH recognizes square packaging as a trademark
But the BGH takes a different view. The square shape of the chocolate bar is not an essential utility property of chocolate. Accordingly, it annulled the decisions and referred the proceedings back to the Federal Patent Court.
Square shape not determined by the type of goods
Three-dimensional signs – even in the form of packaging – can very well be trademarks. Even if the three-dimensional signs represent the shape of a product. However, the exception rule only excludes from registrability signs that consist exclusively of a shape determined by the nature of the goods themselves.
Chocolate, on the other hand, is not necessarily only available in a square shape. Rather, every consumer is aware that chocolate bars are available in all kinds of shapes. The most common shape is the elongated rectangle. But other shapes such as circles, triangles and figures are also conceivable and available on the market. Ritter Sport, on the other hand, has been selling its chocolate exclusively in rectangular packaging for years. This shows that the square shape is not due to the nature of the product itself and that the exception in Section 3 para. 2 No. 1 MarkenG does not apply.
Square packaging of dextrose can also be registered
The same applies to the registration of the square shape as a packaging mark for dextrose. Here, too, the three-dimensional shape mark was registered as an accepted sign for the product “dextrose”.
The cuboid shape of the tablets and their V-shaped notches have technical functions. The cuboid shape of the tablets makes it easier to carry the pieces of glucose in a space-saving manner. The indentations act as predetermined breaking points to ensure easy and even portioning of glucose units.
To the extent that the specially shaped corners and edges of the bars make them more pleasant to eat, they do not have a technical function but a sensory effect on consumption. A shape mark is only not protectable as a trademark if all of its essential characteristics have technical functions. Since this could not be established for the design of the edges of the tablets and the stacking of the individual tablets with these edges, the square shape of dextrose must also be registrable as a shape mark.