BGH gifts shape mark owners sweet victories

lozenge shape mark at issue
The German Federal Court of Justice once again confirmed its reputation for being the most shape mark friendly court in Europe. In four decisions of 18 October 2017, it overturned four decisions by the Federal Patent Court invalidating shape marks. In all four cases, it was undisputed (before the BGH) that the shapes had acquired distinctiveness through use.

In the first cases, the shapes (depicted) were protected for dextrose lozenges (sold under the brand "Dextro Energy"). One shows an individual lozenge, the other a stack of them as they are being sold. The Federal Patent Court held that the shape was necessary to achieve a technical effect in the sense of §3(2)(2) Trade Mark Act (corresponding to article 4(1)(e)(ii) Trade Marks Directive (Recast), "signs that consist exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result").

the second lozenge mark
The Bundesgerichtshof disagreed. While the square shape and the v-shaped groves have a technical effect, the bevelled edges and corners did not achieve a technical effect, but a "sensory effect when consumed" ("eine sensorische Wirkung beim Verbrauch"). This was not a technical effect in the sense of the law. Since the shape of the edges and corners were essential characteristics of the marks, the decisions of the Patent Court were overturned.

The other two cases concerned nearly identical shape marks for the packaging of chocolate bars (see image below left). The chocolate is sold under the brand "Ritter Sport". The Federal Patent Court had considered the shape of the packaging to result from the nature of the goods themselves (§ 3(2)(1) Trade Mark Act; corresponding to article 4(1)(e)(i) Trade Marks Directive).

chocolate packaging at issue
The trade mark proprietor appealed also based on the argument that the provision only applies to goods, not to their packaging, but the Federal Court of Justice did not even reach the issue: it considered that the square shape was not an essential characteristic of chocolate bars ("ist keine wesentliche Gebrauchseigenschaft von Schokolade"), annulled the lower court's decision and sent the cases back to the Federal Patent Court (presumably to assess whether there are other grounds for invalidity, namely "shape that is necessary to obtain a technical result", but the press release is not clear on this).

The above summary is based on the press releases nos. 162 and 163/2017 of the Court, the full grounds are not yet published. A detailed analysis of the reasoning is therefore not yet possible.
BGH gifts shape mark owners sweet victories BGH gifts shape mark owners sweet victories Reviewed by Mark Schweizer on Wednesday, October 18, 2017 Rating: 5


  1. I'm not a specialist in trade mark law, but imho the edges of the dextrose do have a technical effect: avoiding cuts. But then again, maybe I am the only one who manages to cut themselves when eating sweets with sharp edges...

    Anyway, while the avoidance of the unpleasant feeling of a sharp edge may be a sensory improvement, I am not convinced that it is not also a technical effect. How about medical food formulations having an unpleasant sensory feeling where improved sensory effects result in better patient compliance?

  2. @Ela: I also found it interesting that the "sensory effect" is considered non-technical. I agree that it would be considered "technical" in the sense of the EPO's case law regarding technical effect. Improvements of organoleptic properties of foodstuffs are routinely considered technical in patent law.
    I believe the BGH would prefer the alternative form test to the CJEU's approach to technical necessity of shape marks(the BGH uses the alternative form test in non-harmonized unfair competition law, but since it is bound by the CJEU's jurisprudence, it finds other ways to "save" marks. Just my two cents.

  3. Inconsistent with the CJEU case law on trade marks. Quite astonishing really that they overturned the lower courts. They will now try and export this to the CJEU under cover of a prelimnary reference.

    How does the Ritter case square with Kitkat?




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