Trade mark protection for chocolate?

The square shape is not an essential functional property of chocolate. Therefore, the square chocolate packaging as a three-dimensional trade mark is capable of protection.

The packaging of Ritter Sport chocolate is generally well-known. The slogan "Square. Practical. Good." applies not only to the chocolate itself but also to the packaging. Therefore, the company had the packaging registered as athree-dimensional trade markas early as 1995.

In the course of an opposition procedure, the German Patent and Trade Mark Office (BPatG) decided (Beschluss vom 04.11.2016 – 25 W (pat) 78/14) that the mark should be deleted due to existing absolute grounds for refusal. The contested shape consisted exclusively of a packaging form which was determined by the nature of the goods themselves.

The legal appeal against this decision of the German Patent and Trade Mark Office (BPatG) was successful.

Decision of the Federal Court of Justice (BGH) – Trade mark protection for packaging

By judgment of 18.10.2017, the Federal Court of Justice (BGH) set aside the decision and remitted the proceedings to the German Patent and Trade Mark Office (BPatG) (Pressemitteilung 162/2017 vom 18.10.2017).

Three-dimensional signs are capable of trade mark protection. This applies in principle also to three-dimensional signs which represent the shape of goods. Although such signs are excluded from trade mark protection where they consist exclusively of a shape which is determined by the nature of the goods themselves, the square shape of the chocolate bar is not an essential functional property of chocolate. Therefore, it was not necessary to decide whether the absolute ground for refusal also applies to the packaging in the present case.

Conclusion

By means of the present judgment, the Federal Court of Justice (BGH) has made clear that the square shape of the packaging is not determined solely by the shape of the chocolate. Rather, other configurations are also customary. The three-dimensional Ritter Sport trade mark therefore remains in force.