• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees‘ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Dr. Christoph Hölscher
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

Ritter Sport retains protection of its quadratic three-dimensional trade mark

23. October 2017

The quadratic shape of the Ritter Sport Chocolate bar retains its trademark protection. The Civil Court of the German Federal Court of Justice (BGH), responsible for trademark law, abrogated the decision of the Federal Patent Court (BPatG), which had decreed the deletion of Ritter Sport’s three-dimensional form mark. The dextrose manufacturer Dextro Energy also benefits from a similar decision by the BGH.  In both cases, the interpretation of Article 3 of the German Trade Mark Act plays the decisive role:

 

The German family company Ritter Sport has to defend its quadratic packaging of its chocolate bar, which has been registered since 1993 as a form mark, against a cancellation request from competitor Milka. The chocolate producer, which is now part of the food giant Mondelez, had applied to the German Patent and Trademark Office (DPMA) for the deletion of the protection of the square shape as a trademark just over a year ago. The BPatG had granted the application in the second attempt and ordered the deletion of trademark protection. The crux of the litigation is the interpretation of article 3 of the German Trade Mark Act, which states in section 1 and 2:

Article 3 Section 1 MarkenG:

All signs, particularly words including personal names, designs, letters, numerals, sound marks, three-dimensional designs, the shape of goods or of their packaging, as well as other wrapping, including colours and colour combinations, may be protected as trade marks if they are capable of distinguishing the goods or services of one enterprise from those of other enterprises.

Article 3 Section 2  MarkenG:

Signs consisting exclusively of a shape

1.  which results from the nature of the goods themselves,

2.  which is necessary to obtain a technical result, or

3.  which gives substantial value to the goods

Three-dimensional forms can thus be protected as a trademark, but not if the form is an “essential functional characteristic” of the type of product.  This legislation is intended to prevent manufacturers from denying a particularly functional design of a product to competitors by means of trademark protection.

 

Controversial point: Quadratic form functional or not?

Ritter Sport

According to the view of the BPatG does this derogation in the case of Ritter Sport’s quadratic chocolate bar exactly apply: the packaging form of the defending trademark is required by the nature of the product “chocholate bar” itself. The form of the packaging and the bar facilitates the storage, transport and the sharing of the chocolate, whereby article 3 section. 2 no. 1 of the Trade Mark Act applies. The three-dimensional trade mark was thus not eligible for protection, so the BPatG then ordered the deletion of the trade mark.

But now the BGH has overturned the decision of the BPatG. The highest court of Germany states that the quadratic shape of the chocolate per se would not be of any use to the consumer. Storage and transport would only concern the production of the chocolate and the sharing of the chocolate bar is not favored by the shape, but by the usual break groove of the bar. Thus, the quadratic shape of the bar is not a “essential functional characteristic of chocolate”, but merely a design aspect.

 

 

Dextro Energy benefits from similar judgment

Dextro_Energy

In a parallel proceeding the Federal Court of Justice decided about another record concerning the Trade Mark Act. In the case of a three-dimensional trade mark of Dextro Energy, market leader in the field of dextrose products, the BPatG had also granted an application for deletion. The three dimensional trade mark concerned is a stack of eight square-shaped plates, a central V-shaped indentation and chamfered and rounded corners and edges. The applicant of the deletion also had referred to Article 3 section 2 of the Trade Mark Act and held the opinion that the shape of the tablets is necessary to achieve a technical effect.

Although the BGH confirmed that the cuboid shape of the plates and the V-shaped indentations have technical functions since they facilitate the space-saving carry-along and facilitating the portioning through the break grooves. However, this does not apply to the specific shaped corners and edges of the tablets, since these solely facilitate the consumption. And that is therefore only a sensory effect. The BGH thus repeals the decision of the BPatG again.

In order to clarify whether there are other reasons which could lead to the exclusion of trademark protection, the BGH has remitted both cases to the Federal Patent Court. Both cases illustrate the quite difficult practical application of the two paragraphs of the Trade Mark Act. The determination of which product characteristics offer a functional benefit and which are not is in many cases a point of interpretation.

 

Do you need a patent attorney to defend your trademark against potential infringement?

Our attorneys are experienced in all areas of intellectual property and can help you wherever you need a professional. Contact us now to recieve a non-binding call-back from our attorneys.

CAT-call_en

 

 

Source:

Text: Press Release of the BGH 18.10.2017

Photo: thechocolatewebsite / Pixabay.com / CC0 License || dpma.de

  • share  
  • share 
  • share 
  • tweet 
  • share 

Category iconTrademark Law Tag iconI ZB 106/16,  Milka,  Ritter Sport,  BGH,  DPMA,  I ZB 105/16

Primary Sidebar

More articles about: Trademark Law

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law

Recent Posts

  • BPatG: Patent claim of cancer drug on active substance as salt 7. March 2022
  • Grant for European IP Protection: SME Fund 2022 4. March 2022
  • CODE-X vs. Cody’s: Likelihood of confusion in drinks? 25. February 2022
  • EOS lip balm no 3D trademark – appeal before ECJ not admissible 24. February 2022

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

4. March 2022
Grant for European IP Protection: SME Fund 2022

Grant for European IP Protection: SME Fund 2022

25. February 2022
CODE-X vs. Cody’s: Likelihood of confusion in drinks?

CODE-X vs. Cody’s: Likelihood of confusion in drinks?

24. February 2022
EOS lip balm no 3D trademark – appeal before ECJ not admissible

EOS lip balm no 3D trademark – appeal before ECJ not admissible

21. February 2022
CFI: Pumpkin seed oil + PGI symbol

CFI: Pumpkin seed oil + PGI symbol

15. February 2022
SPOTIFY v POTIFY – a ‘pot’ app

SPOTIFY v POTIFY – a ‘pot’ app

10. February 2022
CFI: Shoes MADE IN ITALY

CFI: Shoes MADE IN ITALY

Contact us or request a call back

+49 (0) 69 / 606 278 – 0
[email protected]
Request a call back

Footer

Contact

Torhaus Westhafen
Speicherstrasse 59
D – 60327 Frankfurt am Main
Deutschland
+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Office Hours
Moday – Friday:   08:00-18:00

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • LinkedIn
  • xing
  • Email

Newsletter Signup

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]