The trademark holder filed an international trademark registration (IR No. 869 586), claiming inter alia protection in Germany, based on a national French 3D trademark, providing the following coloured representation of a chocolate stick:
A third party filed an invalidation request, arguing that the trademark was devoid of any distinctive character and exclusively served to designate the kind of product (Section 8  No 1, No 2 German Trademark Act). Further to that, it claimed infringement of the principle of clarity of a trademark (Section 3 , 8  German Trademark Act / Article 2 of Directive 2008/95/EC).
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Whereas the German Patent and Trademark Office (German PTO) rejected the invalidation request, the Federal Patent Court ordered cancellation of the trademark, arguing that the trademark falls under Section 3 (1), 8 (1) German Trademark Act (cf. IP Report 2011/V). Upon the trademark holder’s leave to appeal, the Federal Supreme Court overturned the decision and remitted the case for further consideration to the Federal Patent Court.
The Federal Supreme Court confirms that a trademark does not meet the requirement of clarity if its representation refers to various forms of appearance of a product. However, in the present case the representation of the trademark reveals the subject of protection (i.e., shape and structure) clearly enough. Contrary to the Federal Patent Court, the Federal Supreme Court also finds that one representation in general suffices to disclose the three-dimensional character of a mark if the representation is of good quality. However, in such cases, the scope of protection may be limited to what is actually visible. According to Article 3 (1) Madrid Agreement (Marks), whether or not the trademark meets the requirement of clarity has to be evaluated on the basis of the representation as recorded in the register of the country of origin (here: France), and not as recorded in WIPO’s register for international trademark registrations or other national registers subject to subsequent filings.
Further to that, the Court states that the grounds of an invalidation request filed against the German part of an International Registration are limited as Article 5 (1) Madrid Agreement (Marks) provides that a request for invalidation can only be based on grounds laid down in Article 6quinquies B Paris Convention. However, as regards capability of a sign to be represented graphically and clarity of the representation of a trademark as provided in Sections 8 (1), 3 (1) German Trademark Act, these grounds for invalidation of a trademark fall under Article 6quinquies B (iii) Paris Convention, stating that a trademark may be subject to refusal or cancellation if it is contrary to public order.
Although in the present case it appears that the trademark owner in the end may successfully defend against the invalidation request based on Sections 3 (1), 8 (1) German Trademark Act, in case of filing an application for a 3D mark it is nevertheless advisable to provide the trademark office with high quality representations from different perspectives, as drawings or photographs. Finally, the trademark holder in the present case will still have to withstand the challenge that the mark is devoid of distinctive character and descriptive.
While it is generally assumed that successfully enforcing 3D trademarks is difficult, for varying reasons, the proprietor of the present 3D mark actually was successful in an action against an infringer. For details, we refer you to the decision of the Hamburg Appeals Court of October 8, 2008 (Case 5 U 52/06 – Schokoladenstäbchen/ chocolate sticks), published with a detailed commentary in: Hartwig, Design Protection in Europe, Volume 4.