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INTA Bulletin

February 15, 2018 Vol. 73 No. 3 Back to Bulletin Main Page

GERMANY: The FPC Rules on Registrability of 3D Marks for Capri Sun Packaging

In a judgment published in August 2017 (rendered June 28, 2017), the Federal Patent Court (FPC) of Germany ruled that Capri Sun’s beverage packaging is not eligible for protection as a 3D mark because it consists of product features dictated solely by a technical function. June 28, 2017, 26 W (pat) 63/14).

In 1996, Capri Sun obtained trademark protection for the packaging of its fruit juice drinks, depicted below:


In 2013, the registration was successfully contested by means of a request for cancellation. The German Patent and Trademark Office (GPTO) canceled the registration stating that the essential design features of the packaging were merely necessary to obtain technical results. Shapes of goods dictated solely by a technical function are excluded from trademark protection. The GPTO found that the square shaping offered the most efficient way of storage and transport and was impervious to pressure. The lateral welds would only serve the purpose of safely closing the packaging. The remaining characteristics either provided for a better stability or arose from the volume of the liquid. The GPTO considered the packaging not having any further individualizing characteristics.

Capri Sun filed an appeal against the decision with the FPC. The FPC rejected the appeal and confirmed the decision of the GPTO with one exception: it did not assume the square shaping of the packaging to be an essential design feature but an ordinary form in the range of beverage packaging. The FPC based its decision primarily on expired patent specifications stating that such can serve as a strong indication whether the design elements of the packaging were merely attributable to technical considerations. In line with the jurisdiction of the German Federal Court of Justice (FCJ) and the European Court of Justice, the FPC confirmed that the existence of alternative shapes with the same technical function is irrelevant for refusal based on functionality of the shape in question.

The FPC did not grant an appeal on points of law to the FCJ. However, it remains to be seen whether in the long run, the FPC can keep up its strict case law regarding 3D marks. In the recent Ritter Sport chocolate packaging and Dextro Energy glucose cases, the FCJ set aside decisions in which the FPC canceled 3D marks because the challenged designs allegedly solely consisted of a (packaging) form that resulted from the nature of the goods itself and of an alleged technical functionality of their shapes, respectively.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2018 International Trademark Association