On October 18, 2017 the Federal Court of Justice (Bundesgerichtshof) issued four landmark decisions on three-dimensional marks. The Federal Court of Justice set aside Federal Patent Court decisions that had ordered the cancellation of three-dimensional marks for Ritter Sport chocolate packaging and Dextro Energy glucose.

Background information

Ritter Sport had already obtained trademark protection on the packaging, without print, of its square chocolate bars in 1995 and 1998. At the time, the trademarks were registered due to acquired distinctiveness. Kraft Foods Schweiz Holding had initially successfully contested the registrations. The Federal Patent Court held that the challenged design solely consisted of a (packaging) form that was caused by the nature of the product itself. Such forms may not be monopolized for a competitor.

ZERTUS, Dextro Energy’s parent company, had two 3-D marks registered for the form of its glucose tablets in 2003. The appropriate trademark protection was also granted on the basis of acquired distinctiveness. When a competitor filed for cancellation of the trademarks, it was initially granted. The Federal Patent Court ruled that the shape was necessary to achieve a technical effect, since the shape offered the most space-saving option for storage, the rounded corners facilitated consumption, and the centered recess served as a predetermined breaking point to easily divide the tablet. Shapes of goods whose essential characteristic fulfils a technical function are excluded from the eligibility of being registered as a trademark.

The most critical aspect of the decisions was that the grounds for refusal accepted by the Federal Patent Court cannot be overcome by proving acquired distinctiveness.

Decisions of the Federal Court of Justice

Following the trademark owner’s appeal, the Federal Court of Justice set aside the contested decisions and referred the cases back to the Federal Patent Court.

With respect to Ritter Sport packaging, the Federal Court of Justice holds that marks consisting exclusively of a shape that is determined by the type of product itself are not eligible for trademark protection. This applies to a 3-D trademark where the shape has one or more functional characteristics inherent in the (traditional) function(s) of the goods at issue and which the consumer is also looking for in competitors’ goods. The Federal Court of Justice does not consider the square shape of chocolate bars to be an essential characteristic of chocolate.

With regard to the glucose form, the Federal Court of Justice also confirms that marks consisting exclusively of a shape that is necessary to achieve a technical effect cannot claim trademark protection. When the specially shaped corners and edges of the glucose tablets make it more pleasant to consume them, this does not have a technical function, but a sensory effect on consumption. A three-dimensional mark is not eligible to be protected as a trademark only where all its essential characteristics have technical functions. This could not be determined for the design of the edges of the tablets and the stacking of the individual tablets with these edges, however, which is why the Federal Patent Court decisions were set aside by the Federal Court of Justice.

The Federal Patent Court will now need to decide whether there are other grounds that exclude trademark protection for the two product shapes. Until then, the manufacturers can continue to claim trademark protection for their products with reference to acquired distinction.