Global Intellectual Property Client Alert January 2016 Federal Court of Justice: Strict criteria apply when comparing word marks with product shapes The German Federal Court of Justice (BGH) clarified under which circumstances three-dimensional product shapes could infringe word marks. The claimant is the owner of a German word mark translating to “golden bear” and “goldbear”, registered for sweets and used for gummy bears. The defendant sells chocolate products shaped like a bear and wrapped in gold-foil. The claimant argued that its word marks are infringed because the chocolate products are a three-dimensional representation of the semantic meaning of the word marks and therefore confusingly similar. The BGH rejected the claim due to a lack of likelihood of confusion between the word marks and a three-dimensional shape of a product. Due to the different nature of a word mark and a product shape, the signs at hand can only be compared regarding their conceptual similarity. In this regard, the BGH ruled that strict criteria have to be applied when comparing a word mark with a product shape. Otherwise, a single word mark could monopolize a broad range of three-dimensional product shapes. Therefore, it is not sufficient for an infringement of a word mark if only one of several obvious names for a product shape represents the word mark. In the case at hand, the court held that the defendant’s products can not only be called “gold bear” but also “chocolate bear” or “chocolate teddy”. Hence, the signs are not similar on a conceptual level. In future, product shapes can only be challenged by word marks in rare circumstances. The risk of trademark infringement can be reduced even further if the product features the product manufacturer’s own trademarks. For further information please contact: Dr. Rembert Niebel Partner + 49 69 2 99 08 291 Rembert.Niebel@bakermckenzie.com Andreas Jauch Associate +49 69 2 99 08 663 Andreas.Jauch@bakermckenzie.com