3D mark for chocolate held to have been infringed

In a short decision issued on March 18 2010, the German Federal Supreme Court has refused to rehear a case and affirmed a decision of the Hamburg Court of Appeals finding that a three-dimensional trademark for chocolate had been infringed. 
Revillon Chocolatier produces chocolate sticks in the form of a vine stem. It obtained an international registration (Registration 869 586) for the three-dimensional shape of its chocolate sticks in September 2005 in respect of cocoa, chocolate and chocolate products in Class 30 of the Nice Classification. The mark was described as consisting of the shape of a vine stem with small crumbs attached to it. A competitor of Revillon produced chocolate sticks of a similar shape
Revillon filed suit against the competitor, but was unsuccessful before the Hamburg Civil Court. The court held that the shape of the defendant's chocolate sticks should not be taken into account, as its product was sold in packaging. Furthermore, the court held that the defendant did not use the shape as a trademark. Revillon appealed.
During the course of the proceedings, the defendant filed a motion for the cancellation of the German part of Revillon's international registration. The motion was rejected by the German Patent and Trademark Office. The defendant appealed, and this appeal is still pending. However, the Hamburg Court of Appeals decided not to stay the infringement proceedings until the conclusion of the cancellation proceedings, as:
  • it was bound by the validity of the international registration; and
  • it did not believe that there was a high likelihood that the cancellation action would be successful.
While the Court of Appeals had no difficulty finding that the goods were identical and that the shape of the defendant's products was similar to Revillon's three-dimensional mark, the decisive issue in this case was whether the defendant used the shape as a trademark. The Civil Court had found that this was not the case, but the Court of Appeals disagreed. It stated that, to establish use as a trademark, it had to be shown that the defendant's use could interfere with the main function of the trademark - namely, to guarantee the origin of the goods. The court held that the mere interference with the function of the mark justified the assumption that the defendant used the shape as a trademark, and that such use was not dictated by technical solutions or the aesthetic design of the product.
The Court of Appeals conceded that consumers are aware that chocolate products come in all kinds of designs and shapes. Consequently, consumers are less likely to believe that the shape or design of a chocolate product indicates its origin. However, the court stated that it was sufficient to prove that there was a reasonable possibility that consumers would believe that the shape of the goods indicated their origin.
The court was also of the opinion that the present case should be distinguished from other cases involving chocolate designs, as:

  • the shape of Revillon's product was unique and distinctive; and
  • Revillon's mark displayed certain characteristic elements which went far beyond technical or aesthetic requirements.
Analyzing the three-dimensional mark in detail, the court stated that the shape of a vine stem, as well as the small crumbs attached to it, gave the impression of a naturally grown product, which differed considerably from other chocolate products (which are usually very stylized). Moreover, the court held that the shape could be understood as an indication that the goods originated from a wine-growing area - which was indeed the case for Revillon's goods - and, therefore, also served as an indication of origin.
The court concluded that the chocolate sticks at issue differed from other chocolate sticks available on the market. Revillon's product was so unusual that it had a considerable degree of distinctive character. The court referred to the Pralinenform decision of the Federal Supreme Court, in which it was held that a shape may be assumed to be an indication of origin when:

  • it differs considerably from the usual shapes used for the goods at issue; and
  • the average consumer will consider the shape to be an indication of origin without any further intellectual effort being required.
The court believed that this was the case for Revillon's mark.
The court also considered the defendant's argument that it sold its product in packaging, so that the chocolate sticks would be seen by consumers only after the package had been opened. In Pralinenform, the Federal Supreme Court had held that, in such circumstances, the shape of the goods would not be regarded as an indication of origin. However, the Court of Appeals believed that this did not apply in the present case, as the specific shape of the defendant's product was clearly displayed on the packaging and could thus be seen at the time of purchase. Further, the court stated that, even if consumers saw the shape of the defendant's chocolate sticks only after the package had been opened, the shape could still be considered as an indication of origin.
Therefore, the court held that the defendant used the shape as a trademark because such use would interfere with the function of Revillon's mark. In view of the identity of the goods, the court concluded that infringement had occurred and enjoined the defendant from selling its goods on the German market. It also granted damages to Revillon.
The defendant filed a motion to have the case reheard by the Federal Supreme Court. However, the Supreme Court stated that it would not rehear the case, as the Court of Appeals had not infringed any basic principles of German law. The Supreme Court thus concurred with the findings of the Court of Appeals and the decision is now final.
This is one of the rare cases in which the owner of a three-dimensional mark has successfully enforced its rights against a competitor. Whether this decision will trigger a change in German practice remains to be seen. Moreover, it will be interesting to see how the Federal Patent Court decides in the cancellation proceedings.
Carsten Albrecht, FPS Rechtsanwälte & Notare, Hamburg

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