Decade-long chocolate dispute ends: Ritter Sport keeps trademark for square-shaped chocolate

• The case involved applications for the cancellation of two 3D marks for "chocolate bars" owned by Ritter Sport
• Following several appeals, the Federal Court of Justice finally dismissed the applications for cancellation as being unfounded
• The ruling provides some legal certainty regarding the registration of product packaging as a 3D shape mark

Over the past decade, two well-known chocolate manufacturers have been fighting over the exclusive right to square-shaped chocolate bars under German trademark law. In its ruling of 23 July 2020, the German Federal Court of Justice has brought an end to the dispute and decided (again) that Ritter Sport may retain its square-shaped three-dimensional (3D) mark for chocolate packaging.

Background

Since 1996 and 2001, respectively, Ritter Sport has been the proprietor of two 3D square-shaped trademarks for "chocolate bars". In 2010 two applications for cancellation were filed against these trademarks at the German Patent and Trademark Office (GPTO). However, the GPTO rejected these applications as being unfounded. According to the GPTO, the trademarks did not consist exclusively of a shape which is determined by the nature of the goods themselves, nor would the square shape give the product an "essential value", preventing it from being registered as a trademark. The two grounds for cancellation brought forward by the applicant were thus initially rejected.

However, following the applicant's appeals, the Federal Patent Court granted the applications and ordered the cancellation of the trademarks. The trademark owner thereupon filed a legal appeal with the Federal Court of Justice, which was successful. The decisions of the Federal Patent Court were overturned, and the proceedings were referred back to that court. In the opinion of the Federal Court of Justice, the requirements set forth in Section 3(2) No 1 of the Trademark Act, according to which a trademark is excluded from registration if it consists exclusively of a shape that is determined by the nature of the goods themselves, were not fulfilled.

The Federal Patent Court, which had initially affirmed the existence of this ground for cancellation - and thus had not considered the applicant’s second ground for cancellation - then had to examine whether the square shape gave the product an "essential value", as claimed by the applicant. In its second decisions, the Federal Patent Court rejected this second ground for cancellation as being unfounded. The subsequent appeals, this time lodged by the applicant, had to be decided again by the Federal Court of Justice (Ref I ZB 42/19 and I ZB 43/19).

Decisions

The Federal Court of Justice this time confirmed the view of the Federal Patent Court and stated that the registered trademarks did not consist exclusively of shapes which give an essential value to the product. According to the court, the basic square shape of the packaging could serve as an indication of origin for the consumer, so that the latter might associate the chocolate with a particular company, as well as a certain level of quality.

However, this was irrelevant for the case at hand. The shape of the chocolate packaging could be denied protection as a trademark under Section 3(2)(3) of the Trademark Act only if it gave "an essential value" to the product. The Federal Court of Justice clarified that the examination of this ground for cancellation depended, among other factors, on:

• the type of the relevant category of goods;
• the artistic value of the shape;
• significant price differences compared to similar products; and
• how the shape differed from other shapes used on the market.

Overall, the decisive factor was whether it was apparent, from an objective point of view, that it was precisely that shape that determined the consumer’s decision to purchase the product. In the present case, the judges of the Federal Court of Justice did not see any evidence for this assumption, and therefore dismissed the appeals. As a result, the applications for cancellation were finally dismissed as being unfounded.

Comment

Generally speaking, the packaging of goods can be protected as a 3D trademark if it is "special". This criterion is subject to strict requirements in order to prevent monopolies. 

The ruling of the Federal Court of Justice provides some legal certainty; however, it will still remain difficult to successfully register pure product packaging as a 3D shape trademark.

The square 3D trademark of Ritter Sport was originally registered based on Section (3) of the Trademark Act (secondary meaning) - namely, based on its reputation and the fact that it had become established in the trade as a result of its use for the goods for which the application was filed. However, this would not have been possible if the essential obstacle of Section 3(2) had been applicable.