The German Federal Patent Court (“Bundespatentgericht” = “BPatG”) has found that the following two-dimensional black and white figurative mark representing a sweet wrapper is protectable with respect to cough drops in class 5:

Click here to view image.

The Applicant has been distributing cough drops called “Em-eukal” since 1923. Those sweets are sold in a sweet wrapper with twisted ends. The special characteristic of the packaging is that the wrapper includes a piece of paper which sticks out (see above) – the so-called “little flag” (“Fähnchen”). In July 2010, the Applicant filed a German trade mark application to register the figurative mark shown above for various goods in classes 5, 20 and 30. This was refused by the German Patent and Trade Mark Office (DPMA) in its entirety on the ground that the mark applied for was devoid of any distinctive character. It was held the sign was a traditional sweet wrapper without any recognisable characteristic. During the appeal proceedings the Applicant restricted the list of goods to “cough drops (class 5)” and “honey” (class 30) only but the DPMA maintained its objection.

Almost six years later, the BPatG annulled the contested decision of the DPMA and finally recognised the registrability of the mark applied for. The BPatG comprehensively examined three possible grounds for refusal under German trade mark law: Section 3(2)(2) [signs which consist exclusively of the shape of goods], Section 8(2)(1) [trade marks which are devoid of any distinctive character] and Section 8(2)(2) [trade marks which consist exclusively of signs which may serve, in trade, to designate the kind or quality of the goods] German Trade Mark Act (“Markengesetz”).

Pursuant to its wording, Section 3(2) of the German Trade Mark Act generally only applies to three-dimensional marks and prohibits the registration of a trade mark, which consists exclusively of the shape of goods, which is necessary to obtain a technical result (which corresponds to Article 4(1)(e) of the Trade Mark Directive no. 2015/2436). The BPatG found that the rule must also apply to two-dimensional figurative marks which represent the shape of the product packaging and which – like in the present case – clearly indicate the shape of the wrapped goods. However, in the present case, the BPatG found it impossible to find that the little flag had an exclusive technical function. Even though the little flag may theoretically serve as a practical tear aid, it does not incorporate such a function in the present case, because there is still the opportunity to get the candy by pulling apart the twisted ends on each side of the wrapper. Therefore, using the little flag as a tear aid is not obvious and rather pointless.

Secondly, the BPatG found that the figurative mark does not fall under Section 8(2)(1) of the German Trade Mark Act (which corresponds to Art. 4(1)(b) of the Trade mark Directive). That absolute ground of refusal applies if a trade mark is devoid of any distinctive character in relation to the goods or services for which registration is requested. With reference to the CJEU case law, the Court pointed out that in the special case of a trade mark representing the shape of the goods itself, a trade mark must significantly depart from the norm or customs of the sector in order to fulfil its essential original function and not to be devoid of distinctive character. In the case at hand, the customary sweet wrapper provides an additional design element incorporated by the blank little flag. This concrete product packaging design has been exclusively used for decades by the Applicant. On the market, cough drops are sold either loose in cans or small boxes or each one individually wrapped in a tube or in the traditional wrapper with twisted ends. The Court especially considered it relevant that the Applicant has actually used the little flag in order to indicate the business origin of its product due to the fact that the slogan “Only real with the flag (“Nur echt mit der Fahne”) is regularly printed on each flag as reproduced below:

The slogan clearly shows a connection with the further signs “Em-Eukal” or “Dr. C. Soldan” respectively that are also regularly used on each sweet wrapper so that the flag itself appears distinctive. Consequently, the relevant public will perceive the little flag and the overall figurative mark as an indication of origin.

Thirdly, the court found that there was no need to preserve availability (‘Freihaltebedürfnis’) in the sense of Section 8(2)(2) German Trade Mark Act. The figurative mark comprising the additional little flag provides an element that goes far beyond the customary characteristics of the packaging used by other producers of cough drops. Therefore a danger of restricting the freedom of the designer in the relevant field is unlikely to occur.

In order to seek protection for a “product packaging shape mark” applicants will need to make sure that the design of the product packaging comprises elements that stand out substantially against the other usual presentations in trade and that cannot be limited to mere technical function. Those principles have been established by the CJEU in a similar case in which a gold coloured sweet wrapper with twisted ends was denied registration due to a lack of distinctiveness (cp. case C-25/05 of 22 June 2006 – August Storck KG/EUIPO). The CJEU found in that case that the mark applied for did not depart significantly from the norm or customs of the confectionery sector, because the shape of said wrappers was a normal and traditional shape for a sweet wrapper, a large number of sweets so wrapped could be found on the market, the golden colour of the wrappers is not unusual in itself and it is not rare to see it used for sweet wrappers. That confirms that in the present case, the protection of the trade mark applied for is only possible due to the little flag and its concrete distinctive use.

Case BPatG, 30.6.2016 – 25 W (pat) 33/13