The Federal Court of Justice (BGH) today published its ruling on the trademark dispute concerning Ritter Sport: Ritter Sport retains trademark rights to square shape. For years, the square shape of Ritter Sport chocolate, which is protected as a shape trademark, has been contested by competitor Milka.

3D shape of Ritter Sport chocolate as a brand

Three-dimensional shapes can in principle be protected as trademarks (as so-called shape marks or form marks), but not if the shape constitutes an “essential characteristic of the product”. This question was the subject of the proceedings before the Federal Court of Justice (BGH).

Chocolate manufacturer Ritter has had the famous square shape of its Ritter Sport chocolate protected as a trademark (No. 398 69 970) since 2001. This trademark has been contested by competitor Milka in court for years and invokes the protection obstacle according to § 3 para. 2 No. 2 MarkenG. According to this, the square shape would be the characteristic feature of Ritter Sport, which ‘determines the nature of the goods themselves’.

Is the square chocolate bar of Ritter Sport therefore a packaging shape which is itself determined by the nature of the product ‘chocolate bar’? Ritter Sport has been advertising this shape for many years: ‘Square. Practical. Good.’ and seen as the hallmark of its own brand.

On the other hand, the shape makes it easier to store, transport and share the chocolate. And bar chocolate is usually offered in a rectangular shape; the square, in turn, is only a special form of the rectangle.

Stages of the legal dispute

Not surprisingly, in a dispute about such a common form, the case went through the instances of the German courts.

BGH already ruled in 2017 in the Ritter Sport case

The Federal Supreme Court (BGH) had already answered the question of whether the square shape was functional or not in 2017 in a highly regarded ruling on the square shape of Ritter Sport chocolate. In 2017, the Federal Supreme Court had ruled that the square shape of the chocolate bar was not an “essential utility property of chocolate”, but merely a design aspect, and had initially confirmed the trademark protection of the Ritter Sport chocolate bar. At the same time, the case was referred back to the Federal Patent Court to decide whether the square shape is the characteristic feature of Ritter Sport that ‘determines the nature of the product itself’.

Trademark Appeals Senate of the Federal Patent Court

Accordingly, this case was retried before the BPatG in December 2018. Ritter Sport was found to be in the right (25 W (pat) 79/14).

Although the shape of the packaging may fully correspond to the shape of the goods or in any case come so close to it that it is justified not to distinguish between the shape of the packaging and the shape of the goods, the court stated in 2018 and referred to a corresponding judgment Lindt-Goldhase of the highest European court (ECJ).

Milka had opposed the monopolisation of shapes such as the square for chocolate and counted these among the basic shapes of goods to be kept free. The BPatG found that the square shape of the product “chocolate bars” is one or the relevant basic shape, since almost without exception chocolate bars are manufactured and packaged in a rectangular shape; and a square is a special shape of a rectangle. Therefore, the Court of First Instance held that the aesthetic value of such a shape of product cannot be so important that the indication-of-origin function is no longer effective, and ruled out the ground for refusing protection of Ritter Sport Schokolade on the ground that ‘the shape which gives the product its essential value’.

Reference to ECJ decisions

According to European Court of Justice (ECJ), it has been decided that in the case of shape-of-products marks, goods and product packaging are equated only in the case of necessary forms of packaging which do not have their own shape (i.e. goods in granular, powdery or liquid consistency). However, this does not mean that this also automatically applies to packaging designs which clearly indicate the shape of the packaged goods (shaped goods packaging), according to ECJ.

Indeed, the contested 3D mark of Ritter Sport was in fact characterised by the square shape of the packaging body. However, this characteristic of Ritter Sport bars is not conditioned by the nature of the product itself, the BPatG’s appeal panel ruled and referred to standards set by the ECJ in the Hauck/Stokke ruling of September 2014 (C:2014:2233).

In this context maybe the decision of ECJ on the Louboutin red sole and the term “shape” for 3-D marks is interesting for you, too.

BPaG: chocolate bars are generally offered in rectangluar form

The obstacle to protection under § 3 (2) no. 1 MarkenG only applies if the characteristics embodied in the shape of the goods are typical for the use of the respective goods. However, chocolate bars are goods whose primary purpose is consumption and are generally offered in rectangular form; the square is only a particular shape of the rectangle.

Moreover, a ground for refusal under Paragraph 3(2)(3) of the Markengesetz can be accepted only if the contested shape has essential characteristics which distinguish it from other goods. Only the fact that the proprietor of the challenged mark highlights the square shape of the product or the shape of the packaging in advertising as a special feature points in that direction. However, it is not the advertising which is decisive, but the shape of the concrete individual product itself should give the product or the product packaging substantial value compared to the corresponding shapes of the competing products. This is clearly not the case in the present case.

The ground for refusal under Paragraph 3(2)(3) of the Markengesetz therefore does not apply. Chocolate competitor Milka challenged this decision and submitted the case to the Federal Supreme Court, which has now ruled on it.

BGH today: Ritter Sport retains trademark right for square shape

In today’s publiced decision and judgment – the trial took already place on 14 May (I ZB 42/19 and I ZB 43/19) -, the Federal Court of Justice also rejected Milka’s two applications for cancellation as “unfounded”. The registered trademarks do not exclusively consist of a shape that gives the product a significant value, the BGH explained. It is true that the only essential characteristic of the packaging of goods registered as trademarks is their square base area. However, these do not confer any substantial value on the chocolate bars sold in the packaging.

The BGH also recognised Ritter Sport’s marketing strategy, in which the company had used the square shape of the packaging with the well-known advertising slogan “Quadratisch. Practical. Good.”. And indeed, it could be that consumers have an expectation of quality in it and this could lead to a purchase decision, ultimately due to the square shape of the packaging. But that is not what matters in a decision to cancel a trademark, the court emphasized.

The shape of a product or packaging is only excluded from trademark protection under § 3 para. 2 No. 3 MarkenG if it gives the product a significant value – and this is not the case here. For even according to the findings of the Federal Patent Court the square shape of the packaging has no particular artistic value and does not lead to significant price differences compared to similar products.