The Federal Court of Justice (Bundesgerichtshof) recently set aside several decisions of the Federal Patent Court that had revoked protection for two 3D marks (decisions dated October 18, 2017, in cases I ZB 106/16, I ZB 106/16, I ZB 3/17, and I ZB4 /17).
In the first case, Ritter Sport had obtained trademark protection on the packaging, without print, of its square chocolate bars in 1995 and 1998. At the time, the trademarks were registered due to acquired distinctiveness. Kraft Foods Schweiz Holding had initially successfully contested the registrations. The Federal Patent Court held that the challenged design solely consisted of a (packaging) form that was caused by the nature of the product itself (Federal Patent Court, decisions dated November 4, 2016, in cases 25 W (pat) 78/14 and 25 W (pat) 79/14). Such forms may not be monopolized by trademark registration which would restrict competition.
In the second case, Zertus, Dextro Energy’s parent company, had two 3D marks registered for the form of its glucose tablets since 2003. The appropriate trademark protection was also granted on the basis of acquired distinctiveness. When a competitor filed for cancellation of the trademarks, it was initially successful. The Federal Patent Court ruled that the shape was necessary to achieve a technical effect, since the shape offered the most space-saving option for storage, the rounded corners facilitated consumption, and the centered recess served as a predetermined breaking point to easily divide the tablet (Federal Patent Court, decisions dated December 27, 2016, in cases 25 W (pat) 59/14 and 25 W (pat) 60/14). Shapes of goods whose essential characteristic fulfils a technical function are excluded from eligibility for trademark registration.
The most critical aspect of these decisions was that the grounds for refusal accepted by the Federal Patent Court could not be overcome by proving acquired distinctiveness.
Decisions of the Federal Court of Justice
Following the trademark owners’ appeals, the Federal Court of Justice set aside the contested decisions and referred the cases back to the Federal Patent Court (decisions dated October 18, 2017, in cases I ZB 106/16, I ZB 106/16, I ZB 3/17, and I ZB4 /17).
With respect to the Ritter Sport packaging, the Federal Court of Justice held that marks consisting exclusively of a shape that is determined by the type of product itself are not eligible for trademark protection. This applies to a sign which consists exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function or functions of that product and which consumers may be looking for in the products of competitors. The Federal Court of Justice did not consider the square shape of chocolate bars to be an essential characteristic of chocolate.
With regard to the shape of the Dextro product, the Federal Court of Justice confirmed that marks consisting exclusively of a shape that is necessary to achieve a technical effect cannot claim trademark protection. When the specially shaped corners and edges of the glucose tablets make it more pleasant to consume them, this does not have a technical function, but a sensory effect on consumption, said the court. A 3D mark is not eligible to be protected as a trademark only where all its essential characteristics have technical functions. This could not be determined for the design of the edges of the tablets and the stacking of the individual tablets with these edges, however, which is why the Federal Patent Court decisions were set aside by the Federal Court of Justice.
The Federal Patent Court will now need to decide whether there are other grounds that exclude trademark protection for the two product shapes.
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