Only once in a while a three dimensional trademark finds its way to the registry of a national or the Community trademark office. It is all the more spectacular when a trial court finds infringement of such a shape mark.

This exactly happened on August 15, 2014 when the Cologne Appeal Court, in proceedings on the merits, confirmed a decision of the Cologne District Court which had found infringement of the German 3-D trademark registration No 39504819, registered in 1995 on the basis of acquired distinctiveness for “chocolate”. The mark-in-suit is represented by the three views below:

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The Cologne Appeal Court, in a perfect textbook-style applying a six-step-test, went through the various standards under European and harmonized German trademark law to be met for finding infringement. In a first step the Court reminded the defendant that challenging validity of the asserted mark was not a valid defence in infringement proceedings. Rather, the defendant should have initiated cancellation proceedings in order to have the mark invalidated. The Court also held that whether the trademark could be invalidated – e.g., for reasons that the claimant, according to the defendant, failed to obtain protection in several European countries – was irrelevant. The same was true as regards the fact that the claimant also obtained separate protection of the star on the upper side of the single chocolate piece. Consequently, and contrary to the opinion of the defendant, the scope of protection of the trademark-in-suit was not limited to the star but comprised the three-dimensional shape as such.

The Court then, in a second step, turned to the shape of the accused products as shown below:

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According to the Court, the shape of the contested product was not merely perceived by the public as an aesthetical expression and variation of what was commonplace. Rather, the average consumer would perceive the product, due to its distinctiveness and without any examination and particular attention, as an indication of origin. Actually, the contested product would depart from the norm or customs of the sector, i.e., the design of chocolate bars. The fact that the addressed average consumer would conclude from the shape of the good to its commercial origin was supported, according to the Court, by a survey submitted by the plaintiff concerning the consumer’s perception of the defendant’s product. According to this survey, 71.5 % of all interviewees associated the defendant’s product with a specific company or a specific trademark.

In a third step, the Cologne Appeal Court addressed the fact that the consumer would perceive the contested single chocolate piece only when unpacking and then consuming the product but did not accept this as a valid defence. Rather, also a 3-D trademark, which could not be directly perceived by the consumer in the moment of the purchase decision because it is packed, could serve as an indication of origin and, thus, could be used as a mark if it is perceived as such when consuming the product. Moreover, in the case at hand, the challenged piece of chocolate was already shown on the packaging.

Then, in a fourth step, the Cologne Appeal Court examined, and denied, whether the asserted shape mark’s distinctiveness had been weakened. Rather, the products of the competitive environment introduced by the defendant were not sufficiently similar to the trademark-in-suit and/or not sufficiently present on the German market.

Subsequently, in a fifth step, the Court was called to compare the conflicting signs in terms of a visual similarity. Overall, the conflicting signs differed merely in the design of the surface but the “star” – contrary to the opinion of the defendant – did not characterize the overall impression. As a rule, the average consumer perceived a trademark as a whole and did not pay attention to its details. As a consequence, the “typical, soft shape” of the asserted mark as such was dominant while “details of the ornament” had “barely any relevance for the recollection”.

Finally, in a sixth step, the Cologne Appeal Court reminded the defendant that, according to established German case law, it was wrong from the outset to consider whether a risk of confusion can be excluded by the packaging of the challenged products. Trademark protection, said the Court, was directed against use of identical confusingly similar signs as such so that, as a rule, accompanying circumstances which lie beyond the trademark are irrelevant when examining a risk of confusion. In conclusion, the Court confirmed infringement.

Remarks

In light of the careful reasoning it appears difficult to find points of law which would allow finding non-infringement. Actually, the Cologne decision is good news for trademark owners after a series of cases denying claims for infringement of a shape mark