Facts:
Two three-dimensional shape marks have been registered for the trade mark proprietor since 1996 and 2001 as signs enforced in trade for the product "chocolate bars". They show, in two different sizes, the front and the back of a package with a square base as well as two lateral closure flaps and another closure flap on the back. These are the neutralised wrappers of the "Ritter Sport" and "Ritter Sport Minis" chocolate bars.
Course of proceedings to date:
The applicant applied to the German Patent and Trade Mark Office for cancellation of the trade marks in two proceedings each. The German Patent and Trade Mark Office rejected the requests. On appeal by the trade mark proprietor, the Federal Patent Court ordered the cancellation of the trade marks. It held that the signs were excluded from registration under Section 3(2)(1) of the Trade Mark Law because they consisted exclusively of a shape which was determined by the nature of the goods themselves. On appeal by the trade mark proprietor, the Federal Court of Justice reversed these decisions and referred the proceedings back to the Federal Patent Court. It stated that the ground for refusal under Sec. 3 (2) No. 1 MarkenG did not apply; the Federal Patent Court therefore had to examine the question left open by the Federal Patent Court as to whether the ground for refusal under Sec. 3 (2) No. 3 MarkenG existed. According to this provision, signs consisting exclusively of a shape which gives substantial value to the goods are not eligible for protection as trade marks. The Federal Patent Court held that this ground for refusal did not exist and dismissed the applicant's appeals. The applicant has now filed an appeal against this decision with the Federal Court of Justice.
The decision of the Federal Supreme Court:
The Federal Court of Justice dismissed the appeals. The requests for cancellation are not well-founded. The registered trade marks do not consist exclusively of a shape which confers substantial value on the goods. The only essential feature of the product packaging registered as trade marks is their square base. These do not confer any substantial value on the chocolate bars marketed in the packaging. The assessment required in this respect is based on evaluation criteria such as the nature of the category of goods in question, the artistic value of the shape in question, its dissimilarity to other shapes commonly used in the respective market, a significant price difference compared to similar products or the elaboration of a marketing strategy which mainly emphasises the aesthetic qualities of the respective product. The ground for refusal exists if it is clear from objective and reliable factors that the consumer's decision to buy the product in question will be determined to a large extent by that characteristic.
On the basis of the findings made by the Federal Patent Court, it cannot be assumed that consumers' decision to buy the chocolate bars marketed in the square packaging is determined to a large extent by the fact that this packaging shape confers substantial value on the chocolate. According to the Federal Patent Court's findings, the square shape of the packaging has no particular artistic value and does not lead to significant price differences compared to similar products. It is true that the trade mark proprietor pursues a marketing strategy in which it associates the square shape of the packaging with the well-known advertising slogan "Quadratisch. Practical. Good.". It is true that this may lead to the consumers' decision to purchase the chocolate being determined by the square shape of the packaging, because the consumers see in it an indication of the chocolate's origin from a certain company and associate certain quality expectations with it. However, this is not the point. According to § 3 para. 2 No. 3 MarkenG, the shape of a product or its packaging is excluded from trade mark protection only if it confers substantial value on the product. There are no indications of this in the case of the square chocolate bar wrappers at issue here.
Decisions of the Federal Supreme Court of 23 July 2020 - I ZB 42/19 and I ZB 43/19
Lower courts:
BPatG - Decisions of 4 November 2016 - 25 W (pat) 78/14
BGH - Decisions of 18 October 2017 - I ZB 105/16, BGHZ 216, 208 - Quadratische Tafelschokoladenverpackung I and I ZB 106/16.
BPatG - Decisions of 13 December 2018 - 25 W (pat) 78/14
