PROTECTABLE SHAPE MARK - RITTER SPORT CHOCOLATE

A precedent case on protected trademarks just landed on Germany’s Federal Court of Justice (BGH). 

Chocolate manufacturer Ritter has the square shape of their Ritter Sport chocolate protected as a trademark. This trademark had been contested by Milka in court, arguing the square shape of the chocolate cannot be a characteristic feature, as it determines the nature of the goods themselves. Moreover, it had been argued that the shape of the chocolate is a functional feature since it makes it easier to hold and store. 

Before the Supreme Court, it had been ruled that the shape of the chocolate bar is not an essential utility property for chocolates or a functional feature, but merely a design aspect, therefore protectable by trademark. Three-dimensional shapes, shape marks, or form marks may only be protected as trademarks if the shape does not constitute an essential characteristic of the product. 

Accordingly, the appeal was also in Ritter Sport’s favor. The Court stated that 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 good. 

Milka had opposed arguing that this constitutes a monopolization of shapes like the square for chocolate. However, the Court stated that the square shape of chocolate bars is not only one of the relevant basic shapes since most of the chocolate bars are manufactured in a rectangular shape. 

According to the European Court of Justice, in the case of the shape of the product marks, goods and product packaging are equated only in the case of necessary forms of packaging, which do not have their own shapes such as liquid or powder. Even though this does not mean the packaging and the product is immediately protectable by trademark, it constitutes an applicable framework. In this particular case, Ritter Sport was known for the square shape of its packaging and product. By that means, the Court also recognized Ritter Sport’s marketing strategy and advertising slogan for the product, “Square. Practical. Good.” 

The shape of a product could only be excluded from trademark protection if it provides the product a significant value, which may indicate an issue in terms of competition. However, in this particular case, it had been stated that the square shape of the packaging does not possess any artistic value or does not add a significant one; therefore, the Court ruled the square shape is protectable by trademark. 

References:

  1. Judgement of Ritter Sport, 14.05.2020
  2. Pressemitteilung des BGH vom 23. Juli 2020, I ZB 42/19 und I ZB 43/19
  3. Judgemtent of BPatG, december 2018, 25 W (pat) 79/14