Smiley shape in frozen potato products as an origin indicator: Fundamental decision of the Higher Regional Court of Düsseldorf
The question of whether the specific design of a food product, such as the smiley shape of frozen potato products, can serve as a protectable indication of origin within the meaning of trademark law, was recently addressed by the Higher Regional Court (OLG) of Düsseldorf in the ruling I-20 U 33/24. This decision provides an opportunity to closely examine the trademark protection requirements for product designs in the food sector and opens up further perspectives on the distinction between decoration and indication of origin.
Protectability of shape trademarks – legal framework
The Trademark Act grants trademark protection not only for word or image marks but also for three-dimensional designs, provided they are perceived in trade as indicators of the commercial origin of the goods. The crucial factor is whether the design fulfills the primary function of distinguishing the goods of one company from those of other companies. The public must make a specific association with a particular provider – a principle that also applies to creative forms in the food sector.
Design freedom versus functional requirements
For shape trademarks, especially in food products, distinguishing between mere decorative features and genuine indications of origin is often challenging. The Trademark Act generally excludes the registration of such marks whose essential features are determined by the nature of the goods themselves or are necessary to achieve a technical effect. Only imaginative or unusual designs that do not have an immediate technical or taste-related function can qualify as indications of origin.
OLG Düsseldorf: Smiley shape as a commercial distinguishing feature
Facts and key considerations
In the underlying legal dispute, a company sought to protect the smiley shape of its frozen potato products as a trademark. The OLG Düsseldorf analyzed whether consumers recognize more than a purely decorative design in the characteristic shape – namely, a specific indication of commercial origin.
The court emphasized that the smiley design, due to its distinctiveness and striking impact in the market segment of potato products, is capable of indicating a specific company as the origin. In the specific context, it was identifiable to the relevant consumer groups – particularly the end customer – that this was not a design decision driven by technical or taste-related reasons, but a deliberate trademark.
Legal consequences and distinction from public domain
With its decision, the OLG denied a public domain status of the smiley shape in terms of a generally used or functionally necessary design. The court clarified that such forms are generally eligible for trademark registration and protection against imitation, as long as they do not serve exclusively aesthetic or technical purposes.
The court also focused on distinctiveness as a central criterion. If a design is perceived by the targeted consumer groups as a commercial identifier, trademark protection can be claimed – regardless of whether the design initially appears extraordinary.
Implications for companies in the food industry
Perspectives for creative product designs
The OLG Düsseldorf’s statements underline the increasing importance of shape trademarks in the competitive environment of the food industry. Companies that rely on special design features can strengthen their market position through trademark protection and effectively protect themselves from imitation. The case of the smiley potato products exemplifies the balancing act between original product presentation and the legal boundaries of trademark law.
Risk of imitation and disputes
At the same time, the proceedings demonstrate how quickly seemingly simple designs can become the subject of complex disputes. Particularly with popular products that have recognition value, the risk of imitation increases – regularly leading to legal disputes over the validity of shape trademarks.
Outlook: Jurisprudence, practice, and ongoing developments
The decision of the OLG Düsseldorf is part of an ongoing development towards expanded protection of product forms in practice. It sets an accent in the tension between decorative freedom and the function of origin. It remains to be seen to what extent higher courts or future cases will further refine this.
For legally secure assessment of specific projects in the area of trademark and design protection, the respective industry practice, the perception of the targeted consumer groups, and the latest developments in case law must always be considered.
Given the various legal questions regarding the protectability of three-dimensional designs like the smiley form, companies, investors, and asset holders are advised to seek competent guidance from experienced advisors. For more information, MTR Legal offersLegal advice in IP law.
