The German Supreme Court has refused confectioner Ritter’s appeal against a decision that one of Kraft Foods’ Milka chocolate bars does not infringe its 3D trademark.
In 2010, Kraft Foods introduced a double chocolate bar designed to be portioned into two equally sized bars before eating. The bars had lilac-coloured packaging and depicted the Milka lilac cow.
Ritter, which is famous for its range of square chocolate bars, argued at the Cologne Appeal Court that the Milka bar infringed its German marks, which cover the square chocolate tablet shape. It also claimed dilution of distinctiveness of the mark, and likelihood of confusion.
The court dismissed Ritter’s claims, reversing a district court decision. It found consumers would perceive a “very large distance” between Ritter’s chocolate bar and the Milka bar due to the combination of its packaging colour, featured words and image.
The court considered consumer surveys submitted by Kraft Foods to reach its decision.
Jens Matthes, partner at Allen & Overy in Düsseldorf, said that Kraft Foods would likely have won the case without this evidence. Milka is a very well-known brand in Germany, he said, and Ritter would probably have had success asserting its 3D mark against any other chocolate company.
Any other chocolate brand may have faced difficulty selling a square-shaped chocolate bar, he said.
He said Kraft’s case may have been helped by the fact that the Milka bar is designed to be halved before consumption, and that the confusion can only occur after the product’s sale. However, this could be countered with the assertion that post-sale is too late a time to claim confusion, he said.
He continued: “German courts still apply a kind of post-sale confusion, but obviously you would have to overcome higher hurdles to establish if confusion occurs or takes advantage of a well-known trademark.”
He said that the 3D shape, by nature, cannot be presented by itself – it is always accompanied by something ornamental, most often a word mark. There are very few strong 3D trademarks among chocolate bars, he said, naming the triangular prism of Toblerone as one of them.
“This case shows that the scope of protection of a 3D trademark is in practice often limited by the fact that it never occurs as itself in the market,” he said.
“The really interesting trademark cases are 50/50,” he said. Both the district court and appeals court reached well-founded judgments, he said, though “it’s only the discretion of the individuals that decides the case.”
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Ritter, Kraft, Milka, 3D mark, chocolate