Shapes of goods can be protected as trademarks if they are understood by the public as an indication of a company. However, if the shape of the goods is directed to an essential characteristic of the use of the goods, it is excluded from trademark protection under Section 3 (2) of the German Trademark Act. Is the tube packaging of a square chocolate protectable or does it unfairly monopolize an essential characteristic of the chocolate shape?

In 1995, Ritter Sport filed a shape trademark for the packaging of its square chocolate bar, which has been used for decades. Due to the high recognition of the chocolate shape, the packaging shape was registered as an enforced three-dimensional Trademarks (No. 2 913 183).

In 2010, a cancellation application was filed by a third party with the German trademark office. The Trademarks consisted exclusively of a technically necessary form. The DPMA rejected this application for cancellation. In the subsequent Appeal Proceedings, it was additionally argued that the shape of the trademark was exhausted in the nature of the goods (Section 3 II No. 1 MarkenG). The Federal Patent Court approved the application and ordered the cancellation of the Trademarks.

The Federal Patent Court based its decision, among other things, on the fact that the product packaging in question clearly recognizes the shape of the packaged goods. The essential feature was the square base of the packaging body. This was only a specific form of the customary rectangular shape of chocolate bars.

The square shape has practical advantages in that it makes the packaging, storage, transportation and portioning of chocolate bars much easier. It also offers advantages to the consumer because it is easier to store in a jacket pocket than rectangular, elongated shapes.

It is true that the road user will also consider the taste and ingredients of the chocolate to be an essential characteristic of the product. However, this does not mean that the utility properties are not also essential. The shape of the product does not have to include all essential functional characteristics in order to render the shape unprotectable.

Ritter Sport challenged this decision before the Federal Court of Justice and was upheld. The BGH stated the following.

According to the jurisprudence of the ECJ, the essential characteristics of the shape of the goods are determined by the nature of the goods themselves if they have an essential functional characteristic that is part of the typical function of the product. The consumer would also search for such functions in the goods of competitors (see ECJ, GRUR 2014, 1097 para. 25 to 27 – Hauck/Stokke). It is not necessary that the shape in question is indispensable for the function of the product in question or that the manufacturer has no scope for a significant personal contribution.

In the public interest, these provisions are intended to prevent the trademark owner from being granted an unlimited monopoly on the essential functional characteristics of a product via the trademark right. If such properties were reserved for the trademark owner, it could make it more difficult for competitors to give their goods an equally usable form. This would be an unfair Competitive Advantages. It is therefore also not possible for such shape marks to be registered on the basis of market acceptance.

In the present case, the Federal Patent Court rightly regarded the side closure flaps as a customary component of tubular bag packaging for chocolate goods and therefore insignificant for the overall impression. The square shape of the packaging must therefore be assessed.

The shape of the packaging is not normally the same as the shape of the goods. Only in the case of goods that do not have their own shape (e.g. liquid detergents) can the shape of the packaging be examined instead of the goods as a connecting factor for the reason for exclusion. However, if the goods have a specific shape (e.g. a nail), then there is no sufficiently close connection between the shape of the packaging and the goods themselves. If the shape of the packaging fully corresponds to the shape of the goods, then it is justified to equate the packaging with the shape of the goods (Lindt Gold Bunny).

As chocolate bars have their own shape and are only packaged for hygiene reasons, the packaging must not be equated with the shape of the product.

But even if in the present case the protectability of the shape of the packaging is examined on the basis of the protectability of the shape of the goods, trademark protection cannot be denied. However, the square base of the packaging body as the sole essential feature of the shape of the goods packaging reproduced in the Trademarks is not conditioned by the nature of the goods themselves.

For the ground for refusal of protection under Section 3 (2) No. 2 MarkenG, only characteristics of use that are essential for the consumer are relevant. Significant facilitation of packaging, storage and transportation by the shape in question are advantages in the manufacture and distribution of the goods, but they do not benefit the user.

“The ground for refusal under Section 3 (2) No. 1 MarkenG only applies if the characteristics embodied in the shape (here: square shape of chocolate bars) are typical for the use of the respective product and serve the intended use of the product (here: consumption of chocolate bars). Advantages that only occur in constellations that are unusual for the use (here: Carrying chocolate bars in a jacket pocket for consumption on the go) do not constitute essential characteristics of use and do not result in the ground for refusal under Section 3 (2) No. 1 Mar-kenG intervening.”

“For the user, the functionalities of the goods and not the modalities of their manufacture are decisive. According to the ECJ, only the functionalities of the goods in question are covered by Section 3 II.1.”

“The practical advantages cited by the Federal Patent Court for the packaging, storage and transportation of chocolate bars do not relate to properties of use that can benefit the user. Obviously, these are advantages for the suppliers of chocolate bars in the production and distribution of the goods.”

Chocolate bars are a product whose primary purpose is consumption. The taste and ingredients of the chocolate bar are decisive for consumption. The ease of transportation in a jacket pocket, on the other hand, is not an essential characteristic of a product intended for consumption. Otherwise, all forms of (packaged) foodstuffs that fit in a jacket pocket would be excluded from trademark protection.

Note: This judgment clearly shows the considerable possibilities that exist for the trademark protection of packaging. Because the BGH in the present case did not base the question of protectability on minor details such as the side weld seam, but on the basic shape of the chocolate, the broader scope of the case can also be recognized.

Links: juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py