Federal Supreme Court (BGH): Square packaging for Ritter Sport chocolate remains protected as a trademark

Decisions of 23 July 2020 – I ZB 42/19 and I ZB 43/19

The square shape of Ritter Sport chocolate remains protected under trademark law, since the shape is not determined by the nature of the goods themselves and therefore no grounds for cancellation apply.

Press release of the Federal Supreme Court (BGH):

The First Civil Senate of the Federal Supreme Court, which is responsible for trademark law, today rejected the applications for cancellation of two trademarks registered for chocolate bars in the form of square packaging. It is therefore clear that these packaging continue to be protected as trademarks.

Facts of the case:

Since 1996 and 2001, two three-dimensional shape marks, which acquired distinctiveness, have been registered for the proprietor for the products “chocolate bars”. They show, in two different sizes, the front and the back of a packaging with a square base area and two side closure flaps and a further closure flap on the back. These are the neutralised packaging of the chocolate bars “Ritter Sport” and “Ritter Sport Minis”.

Proceedings so far:

The applicant has launched two cancellation proceedings against theses trademarks with the German Patent and Trademark Office. The German Patent and Trademark Office has rejected the requests. In response to the applicant’s appeals, the Federal Patent Court ordered the cancellation of the trademarks. It assumed that the signs have to be excluded from registration under § 3 (2) No. 1 MarkenG (German Trademark Act) because they consisted exclusively of a shape dictated by the nature of the goods themselves. In response to the trademark proprietor’s appeals, the Federal Court of Justice annulled these decisions and referred the proceedings back to the Federal Patent Court. It stated that the grounds for refusal of protection under § 3 (2) No. 1 MarkenG did not exist; the Federal Patent Court therefore had to examine the question as to whether the ground for refusal of registration under § 3 (2) No. 3 MarkenG existed. According to that provision, signs which consist exclusively of a shape which gives substantial value to the goods are not eligible for protection as trademarks. The Federal Patent Court assumed that this ground for refusal did not exist and rejected the applicant’s appeals. The applicant has now lodged an appeal with the Federal Supreme Court.

The decision of the Federal Supreme Court:

The Federal Supreme Court rejected the appeals. The requests for cancellation are not substantiated. The registered trademarks do not consist exclusively of a shape, which gives the goods a significant value. The only essential characteristic of the product packaging registered as trademarks is their square base area. Those do not give substantial value to the chocolate bars marketed in the packaging. The relevant assessment has to be based on criteria such as the nature of the category of goods in question, the artistic value of the shape in question, its difference in relation to other shapes commonly used on the market in question, a significant difference in price compared with similar products or the development of a marketing strategy which emphasizes mainly the aesthetic qualities of the goods in question. The ground for refusal applies if it is clear from objective and reliable evidence that that characteristic determines to a large extent consumers’ decision to purchase the product in question.

On the basis of the findings made by the Federal Patent Court, it cannot be assumed that the decision of consumers to buy chocolate bars marketed in square packaging is determined to a large extent by the fact that that shape of packaging gives substantial value to the chocolate. According to the findings of the Federal Patent Court, the square shape of the packaging has no particular artistic value and does not lead to significant price differences compared with similar products. It is true that the trademark proprietor pursues a marketing strategy in which it uses the square shape of the packaging with the well-known advertising slogan “Quadratisch. Praktisch. Gut.” This may lead to the fact that the square shape of the packaging determines the consumer’s decision to purchase the chocolate, because consumers see in it an indication of the origin of the chocolate from a particular company and thus associate it with certain expectations of quality. But that is not the point. The shape of a product or packaging is excluded from trademark protection under § 3 (2) No. 3 MarkenG only if it gives the product a significant value. In the case of the square chocolate bar packaging at issue in this case, there is no evidence to support that conclusion.

Previous instances

Federal Patent Court (BPatG) – Decisions of 4 November 2016 – 25 W (pat) 78/14

Federal Supreme Court (BGH) – Decisions of 18 October 2017 – I ZB 105/16, BGHZ 216, 208 – Square chocolate bar packaging I and I ZB 106/16

Federal Patent Court (BPatG) – Decisions of 13 December 2018 – 25 W (pat) 78/14

The relevant provisions are as follows:

§ 3 (2) No. 1 and 3 MarkenG (in the version applicable until 13 January 2019)

Not eligible for protection as trademarks are signs, which consist exclusively of a shape which 1. is determined by the nature of the goods themselves, […] 3. which gives substantial value to the goods.