Germany jurisdiction report: Chocolate packaging and protection

09-04-2018

Jens Künzel

Germany jurisdiction report: Chocolate packaging and protection

mac99 / iStockphoto.com

In Germany and all over Europe, Ritter Sport is a well-known brand for chocolate products. At least in Germany, the special form in which Ritter Sport chocolate bars are packaged—a quadratic form with a wrapping paper that can easily be opened by breaking the quadrat in half—contributes to the product’s special appeal to consumers (at least in this author’s mind).

In October 2017, Germany’s Federal Supreme Court had to decide whether the quadratic chocolate packaging, which Ritter Sport has been using for a long time, was eligible for trademark protection in Germany.

The German Federal Patent Court had said that it was not eligible, basing its decision on two grounds. 

First, the court had said that the trademark (which showed the 3D quadratic shape of a chocolate bar wrapper, without any prints on it, wrapped in a certain way in white packaging material) consisted exclusively of the shape, or another characteristic, which results from the nature of the goods themselves.

This is one of several potential absolute grounds for refusal of a trademark, regulated under the EU trademarks directive and transformed into German trademarks laws.

On appeal, the German Supreme Court countered that, as a matter of principle, the Court of Justice of the European Union (CJEU) had ruled in the past that the packaging of chocolate bars generally did not exclusively consist of the shape that results from the nature of the goods themselves.

In this case, the court saw no exceptional reasons why this case should be evaluated differently. The Supreme Court said that this absolute ground for refusal required that the packaging absolutely corresponds with the shape of the goods concerned. That assumption was not possible here, since the packaging was similar to the shape of the goods (the chocolate bars themselves) but was not identical to it.

The function of the shape

A further reason the Supreme Court did not agree with the lower Patent Court’s reasoning was that—aside from the decisions of the CJEU on chocolate bar packaging—there was no way to argue here that the claimed shape exclusively consisted of the nature of the goods concerned.

The Supreme Court acknowledged that the Patent Court’s assumption that the main feature of the shape claimed by the trademark application was the “quadratic form” was correct. But the Supreme Court did not agree with the lower court’s reasoning that the quadratic shape was the result of the nature of the goods concerned.

"The Supreme Court said that the quadratic shape was not an inherent quality of use of the chocolate bar."

Contrary to the lower court’s opinion, the Supreme Court said that the quadratic shape was not an inherent quality of use of the chocolate bar. It may present some advantages for transporting and distribution, but these were advantages not for the user, but for the manufacturer and distributor, and these did not count as inherent qualities of use of the goods that would support the asserted absolute ground for refusal.

Further, the lower court had said that the quadratic shape facilitated the apportioning of the bar. But, the Supreme Court reasoned, the quadratic shape of the packaging alone did not facilitate this; rather, the apportioning of single pieces of the chocolate was the result of pre-determined breaking points, such as grooves in the chocolate bar. These were not the subject matter of the claimed trademark which only showed the plain white wrapper in a certain form.

Another advantage which the lower Patent Court claimed was decisive for its reasoning was not relevant, at least in the Supreme Court’s opinion.

The lower court had reasoned that the quadratic shape facilitated the easy transportation of the chocolate bar by its user (the consumer) by providing an easy way to store it in pockets, etc. However, the Supreme Court said that this was not a quality that could be said to be inherent in the quadratic form itself.

The Supreme Court remanded the matter back to the lower court to evaluate the case in light of its reasoning.

Jens Künzel is a partner at Krieger Mes & Graf v. der Groeben. He can be contacted at: jens.kuenzel@krieger-mes.de

Jens Künzel, Krieger Mes & Graf v. der Groeben, WIPR jurisdiction report, quadratic chocolate packaging, Ritter Sport trademark, Germany trademark

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