Single representation of 3D mark may suffice to disclose subject matter clearly


In a case involving a three-dimensional (3D) trademark representing a chocolate stick, the German Federal Supreme Court has held that a single representation of a 3D mark can be sufficient to represent the subject matter of the mark clearly (Case I ZB 56/11I).

The trademark holder owned an international trademark registration (International Registration No 869 586) designating Germany (among other countries), based on a national French 3D trademark. It provided 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 the product (see Section 8(2) No 1 and No 2 of the German Trademark Act). Further, it claimed that the mark infringed the principle of clarity - that is, the requirement that a trademark must be capable of being represented graphically (see Sections 3(1) and 8(1) of the Trademark Act, and Article 2 of the Trademarks Directive (2008/95/EC)).

While the Patent and Trademark Office rejected the request for invalidation, the Federal Patent Court ordered the cancellation of the trademark under Sections 3(1) and 8(1) of the Trademark Act. The trademark holder filed for leave to appeal. The Federal Supreme Court overturned the decision and remitted the case to the Patent Court for further consideration.

The Federal Supreme Court confirmed that a trademark does not meet the requirement of clarity if its representation refers to various forms of the appearance of a product. However, in the present case, the representation of the trademark showed the subject matter to be protected (ie, its shape and structure) sufficiently clearly. Contrary to the Federal Patent Court, the Federal Supreme Court found that a single representation is in general sufficient 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) of the Madrid Agreement, the issue of whether a trademark meets the requirement of clarity must be evaluated on the basis of the representation that is recorded in the register of the country of origin (here, France), and not on the basis of the representation recorded in WIPO’s register of international trademarks or other national registers.

In addition, the court stated that the grounds of an invalidation request filed against the German part of an international registration are limited, as Article 5(1) of the Madrid Agreement provides that a request for invalidation can be based only on grounds laid down in Article 6quinquies (B) of the Paris Convention. However, with regard to the ability of a sign to be represented graphically and the clarity of the representation of a trademark, as provided in Sections 8(1) and 3(1) of the German Trademark Act, these grounds for invalidation fall under Article 6quinquies B(iii) of the Paris Convention, which states that a trademark may be subject to refusal or cancellation if it is contrary to public order.

Although it appears that the trademark owner may eventually be successful in defending itself against the invalidation request based on Sections 3(1) and 8(1) of the Trademark Act, applicants for a 3D mark are nevertheless advised to provide the trademark office with high-quality representations from different angles, such as drawings or photographs. The trademark holder in the present case must still withstand the claim that the mark is devoid of distinctive character and descriptive.

While it is generally assumed that it is difficult to enforce rights in 3D trademarks, the proprietor of the 3D mark at issue here was successful in an action against an infringer in 2008 (see the October 8 2008 decision of the Hamburg Appeals Court in Case 5 U 52/06).

Philipe Kutschke, Bardehle Pagenberg, Munich

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