Battle of the Easter bunnies: the scope of 3D trademarks

According to German and European trademark law, it is possible to obtain trademark protection for the shape of a product or packaging by way of a 3D trademark.

Whereas Community trademark law allows trademark protection only by way of registration, in Germany protection by use in commerce is possible in addition to protection through registration, provided that the trademark has obtained a certain degree of market awareness.

The legal criteria for the protection of a 3D trademark are the same as for other types of trademarks (word marks, figurative marks). However, and as a rule, consumers tend to perceive the shape of a product as a merely decorative element and not as a trademark.

If the 3D trademark conforms to a shape commonly found in the particular market field, it may be necessary to prove that the trademark acquired distinctiveness through use (‘secondary meaning’). Depending on the circumstances, the applicant may or may not succeed with a 3D application. The right holder should also consider obtaining design protection, which requires the 3D shape to have novelty and individual character.

In Germany, market surveys are the primary means of proving secondary meaning. Even rather common shapes may claim trademark protection if the results of the market survey show that a significant part of the relevant part of the public—which would, in respect of everyday products, be the average consumer— perceives the shape as a trademark.

A successful example for such a 3D trademark is the round shape of the chocolate praline ‘Rocher’, made by Ferrero, which successfully withstood a request for invalidation, because the trademark holder could prove secondary meaning. Market surveys are useful, and perhaps even necessary, to secure trademark protection at the national level on the basis of secondary meaning.

When secondary meaning must be shown for a Community trademark because the 3D mark is not inherently distinctive, proof of acquired distinctiveness everywhere in the European Union will often not be available, or available only with extreme effort and expense, or even impossible to obtain, because the mark has not been used in every country of the EU.

In case of Lindt & Sprüngli’s chocolate Easter bunny, well-known at least in Germany, the General Court of the EU denied trademark protection by way of a Community trademark for a 3D Easter bunny in a golden foil, not comprising further stylistic elements.

As regards 3D trademark applications, both under European and under German law, up to six different views of the sign can be submitted to the Office for Harmonization for the Internal Market (OHIM) or to the German Patent and Trademark Office.

A single view may be sufficient, but it is recommended to provide the office with clear digital images or drawings representing the mark from different perspectives. An insufficient representation may actually lead to a refusal or, later, to a loss of rights and may also limit the scope of protection.

Most recent German case law concerns a 3D mark for a chocolate stick in the shape of a grapevine. The trademark is a Madrid mark based on a French registration, with a single picture showing the mark. In the Netherlands, a cancellation request has been unsuccessful to date, but the trademark offices in the UK, Denmark and Sweden refused protection.

The German Federal Patent Court (contrary to the German Patent and Trademark Office), upon request of a third party under attack by the trademark holder in parallel infringement proceedings, ordered cancellation of the German part of the international registration (Madrid), arguing that the trademark infringed the principle of clarity of a trademark.

According to the Federal Patent Court, the representation of the trademark did not reveal the subject of protection properly. In particular, the representation did not provide any three-dimensional elements.

“PROTECTION As A REGIsTERED 3D TRADEMARk, IN GENERAL, WILL REQUIRE THE FILING OF VARIOUs REPREsENTATIONs sHOWING THE sIGN FROM DIFFERENT PERsPECTIVEs (AT LEAsT IF THE sIGN Is OF A CERTAIN COMPLEXITY).”

According to the court, protection as a registered 3D trademark, in general, will require the filing of various representations showing the sign from different perspectives (at least if the sign is of a certain complexity).

For simple signs one representation may suffice, provided that the quality of the representation is acceptable. In this case, the quality was not deemed acceptable, because the representation did not reveal the details of the sign. In particular, shape, orientation in space and stylistic elements remained unclear.

In a nutshell, 3D trademark protection of the mere shape of a product or packaging is available if the shape departs significantly from similar shapes for the same or similar products. If secondary meaning must be shown, this may be more easily achieved for a single country such as Germany than for the whole of the EU.

Scope of protection

The scope of protection of a 3D trademark is not constant but is subject to change, always depending on the circumstances at the time that the rights in the mark are enforced. The scope may grow over time with extensive use, and may diminish through the appearance of similar products on the market not challenged by the proprietor.

As regards enforcement of the mentioned 3D trademark for the chocolate sticks, the trademark holder had successfully challenged a third party chocolate stick before the Hamburg Appeal Court. The defendant’s further appeal filed with the Federal Supreme Court remained unsuccessful.

Even if the cancellation proceedings led to final cancellation of the sign-in-suit, this would not have an impact on the final and binding character of the decision in litigation proceedings. Nevertheless, the ‘infringer’ could resume use of the allegedly infringing shape.

Contrary to the successful enforcement of the 3D chocolate trademark, the owner of a 3D trademark comprising the shape of a chocolate praline failed to enforce his 3D trademark.

One of the cases attracting great attention recently has been the so-called ‘Battle of the Easter Bunnies’ which was related to the enforcement of the 3D trademark comprising a golden Easter bunny against competitor Easter bunnies: Lindt & Sprüngli initiated legal proceedings in Austria and Germany. In Germany, the claimant lost before the Frankfurt District Court and the Frankfurt Appeal Court.

The claimant filed a further appeal with the Federal Supreme Court, which reversed the earlier decision and remanded the case to the Appeal Court. After reconsideration, the Appeal Court rejected the complaint again, but the claimant filed a further appeal with the Federal Supreme Court which, again, reversed the decision and remanded the case to the Appeal Court.

According to press reports, the Appeal Court rejected the complaint again in November 2011. The decision has not been published yet. It will be interesting to study the reasoning in order to find out whether, this time, the Frankfurt Appeal Court correctly applied trademark principles or again hid some Easter eggs to be found by the Federal Supreme Court (assuming the claimant files a further appeal).

These proceedings are of significance beyond the bunny case itself because the Federal Supreme Court provided detailed guidance, inter alia, on the assessment of the overall impression of conflicting 3D signs. Among the important issues of the case was whether the average consumer perceived the shape of the bunny under attack as a trademark—viz, as a sign indicating that bunnies of such shape originate from the same or economically related undertakings.

Interestingly, the claimant submitted a market survey which revealed that the broad majority of the public perceived the shape as a trademark. The claimant, then, argued that, due to the similarities between the conflicting bunnies, the result could be transferred to public perception of the challenged bunny. The Supreme Court rejected this argument, stating that such transfer was admissible only where the infringing sign was almost identical to the sign-in-suit.

Apparently, the enforcement of ‘complex’ 3D trademarks will continue to present difficult issues, not only in Germany but also in Europe in general.

The current situation for protection and enforcement of 3D trademarks consisting of the shape of a product or its packaging may be summarised as follows: ‘unusual’ shapes with inherent distinctiveness are protectable as European Community trademarks and national trademarks. When secondary meaning must be shown this will be easier on the national level than Europe-wide.

Enforcing 3D trademarks requires a showing of likelihood of confusion, which is particularly difficult in cases of complex trademarks made up of different elements: shape, colour, etc. Protection of product shapes requires careful consideration of the available alternatives. Trademarks and designs are relevant IP rights. When it comes to litigation, the rights holder has to decide how to enforce his rights.

For designs he has to make a detailed analysis of prior art to determine validity and scope of protection, the latter being ‘fixed’ and independent from third parties’ products. In respect of trademarks, the rights holder also has to consider third party products that are currently on the market.

Although the question of whether a sign infringes a trademark is ultimately a legal issue to be assessed by the court, it is advisable to conduct a market survey regarding the allegedly infringing sign in order to demonstrate public perception of a product.

Dr Philipe Kutschke is a certified IP lawyer and commercial mediator at Bardehle Pagenberg, Munich. He can be contacted at: philipe.kutschke@bardehle.de