Federal Court of Justice confirms trademark protection for Ritter Sport’s square packaging
On July 23, 2020, the Federal Court of Justice (BGH) issued a landmark decision (Case Nos. I ZB 42/19 and I ZB 43/19) regarding the trademark protection eligibility of product shapes. At the center of the decision was the famous square packaging of chocolate manufacturer Ritter Sport, which has been advertising its products for decades with the slogan “Quadratisch. Praktisch. Gut.” The competitor Milka, which sought the annulment of the corresponding trademark registrations, filed the lawsuit. The BGH’s decision sets a precedent in the assessment of product shapes under trademark law and establishes important standards for companies seeking to protect their brand identity through distinctive shapes.
Background of the legal dispute
Initial situation and significance of the shape trademark
The square shape is a central element of Ritter Sport’s brand identity and has been used by the company since the 1930s. With this, it intentionally deviates from the industry standard, which typically features rectangular chocolate bars. Ritter Sport registered this shape as a three-dimensional trademark (so-called shape mark) for chocolate with the German Patent and Trademark Office (DPMA) in 1993 and 1995.
Milka, a company operated by Mondelez International, objected that the registration of a purely geometric form as a three-dimensional trademark was inadmissible. The applicant based this on the bar to protection set forth in Section 3 (2) of the German Trademark Act (MarkenG), according to which certain shapes cannot be protected as trademarks, particularly when the shape is determined by the nature of the goods themselves or is necessary to achieve a technical result.
Subject matter of the dispute and procedural history
Both the German Patent and Trademark Office and the Federal Patent Court had already addressed the question of whether the square shape sufficiently indicates origin and whether there is a need to keep it free. As previous proceedings had produced differing assessments, the BGH has now established a clear standard with its decision.
Legal assessment and reasoning of the BGH
Examination of absolute grounds for refusal
In the opinion of the BGH, trademark protection for the square shape does not fail because of the absolute grounds for refusal defined in Section 3 (2) MarkenG. In this context, the BGH specifically reviewed three key aspects:
1. Nature of the product
The square shape is not dictated by the nature of the product—that is, the characteristics of chocolate. Chocolate bars can just as easily be rectangular, round, or of other shapes, and these are available on the market.
2. Technical necessity
The second criterion—that the shape is necessary solely to achieve a technical result—also does not apply, according to the court. The square shape is not essential for the technical processing, storage, or transportation of chocolate. Rather, it is the result of a conscious design decision.
3. Substantial value
The criterion requiring denial of protection concerns shapes that give the product a substantial value. According to the judges, this is also not relevant here, as the defining value of the chocolate does not lie solely in the shape, but is also determined by other factors such as taste, ingredients, and the product’s origin.
Conclusion
Thus, the registration of the square packaging as a three-dimensional trademark remains permissible. The view already largely shared by the Federal Patent Court—that there is no need to keep the square basic form of chocolate bars free—has been confirmed by the BGH.
Implications for the trademark landscape
Significance for product design
The decision underscores the possibility of obtaining trademark protection for distinctive product shapes, provided the legal requirements are fulfilled. At the same time, it makes clear that trademark protection is not intended to monopolize technical solutions or designs that are strictly dictated by the intended purpose of the product.
Implications for companies
Companies that use unique product shapes and employ these as distinguishing features in competition benefit from the decision. It remains a prerequisite that the shape is not exclusively functionally determined or technically necessary and does not fulfill a purely aesthetic function, but rather serves as an indication of commercial origin.
At the same time, competitors must note that—as in the present case—established, unique forms can also be protected against imitation through shape trademarks. The decision thus strengthens the scope for companies to individualize their products within the framework of trademark law.
Summary and outlook
With its decision, the Federal Court of Justice has sent a clear signal for the recognition of product shapes as trademarks and confirmed the protection possibilities for companies that invest in distinctive packaging or product designs. Although every individual case requires careful consideration of the grounds for refusal, it remains clear that merely basing a refusal on the geometric simplicity of a shape does not necessarily preclude trademark protection.
Companies that develop a brand identity shaped by specific product design gain additional legal certainty from this decision. Nevertheless, the legal situation remains complex in detail and involves considerable requirements with respect to distinguishing between protectable and non-protectable designs.
For further questions relating to intellectual property rights—particularly in the field of trademark and design law in both international and national contexts—the lawyers at MTR Legal are pleased to offer their advisory services.
