The I. Civil Senate of the Federal Court of Justice, which is responsible among other things for trademark law, today dismissed the applications for cancellation of two trademarks registered for chocolate bars in the form of square packages. It is thus clear that these packages continue to be protected as trademarks.

Facts

Two three-dimensional shape marks have been registered for the trademark owner since 1996 and 2001 as signs enforced in the course of trade for the product “chocolate bars”. In two different sizes, they each show the front and back of a package with a square base and two side closure flaps and another closure flap on the back. These are the neutralized wrappers of the “Ritter Sport” and “Ritter Sport Minis” chocolate bars.

Course of proceedings to date

The applicant has applied to the German Patent and Trademark Office for cancellation of the trademarks in two proceedings each. The German Patent and Trademark Office rejected the applications. Upon the appeals of the trademark owner, the Federal Patent Court ordered the cancellation of the trademarks. It assumed that the signs are protected under § 3 para. 2 No. 1 MarkenG were excluded from registration because they consisted exclusively of a shape which was determined by the nature of the goods themselves. On appeal by the trademark owner, the Federal Court of Justice reversed these decisions and referred the proceedings back to the Federal Patent Court. He stated that the ground for refusal of § 3 para. 2 No. 1 MarkenG did not exist; the Federal Patent Court therefore had to examine the question left open by it as to whether the ground for refusal under Section 3 (1) of the German Trademark Act was applicable. 2 No. 3 MarkenG exists. Accordingly, signs consisting exclusively of a shape which gives substantial value to the product are not eligible for protection as a trademark. The Federal Patent Court held that this ground for refusal did not exist and dismissed the applicant’s appeals. The applicant has now lodged an appeal against this with the Federal Court of Justice.

The decision of the Federal Court of Justice

The Federal Court of Justice dismissed the appeals. The requests for cancellation are not substantiated. Registered trademarks do not consist exclusively of a shape that gives substantial value to the product. The only essential feature of the goods packaging registered as trademarks is their square base. These do not add significant value to the chocolate bars sold in the packages. 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 different nature compared to other shapes commonly used on the market in question, a significant price difference compared to similar products, or the elaboration of a marketing strategy that mainly emphasizes the aesthetic qualities of the product in question. The ground for refusal exists if it is clear from objective and reliable evidence that the consumer’s decision to buy the product in question is 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 the decision of consumers to purchase the chocolate bars marketed in the square packaging is determined to a large extent by the fact that this packaging shape gives the chocolate a substantial value. According to the findings of the Federal Patent Court, 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 trademark owner 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 result in consumers’ decision to purchase the chocolate being determined by the square shape of the packaging, because 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 Sec. 3 (2) No. 3 MarkenG, the shape of a product or packaging is excluded from trademark protection only if it gives the product substantial value. There are no indications of this in the case of the square chocolate bar packaging at issue here.