/ Created by Dr. Reinhard Fischer

Ritter Sport and Dextro Energy maintain trademark protection for their square shape marks

Federal Court of Justice suspends decisions of the Federal Patent Court for the time being.

Düsseldorf, November 2, 2017 – The confectionery manufacturers Ritter and Dextro Energy can retain the exclusive right to the shape of their products for the time being: On October 18, 2017, the Federal Court of Justice (BGH) confirmed that an entitled appeal was filed against the cancellation of the trademark protection of the Ritter Sport chocolate bars and Dextro Energy dextrose tablets. The BGH thus overturned two decisions of the Federal Patent Court (BPatG), through which the deletion of the three-dimensional shape marks had been ordered. 

In the Ritter Sport case, Milka manufacturer Kraft Foods (now Mondelez) had effected the cancellation of the square pack as a registered trademark. In the case of Dextro Energy, a competitor was also at first successful in its action against the entries in the trademark register. In both cases, the question was whether the respective type of goods or packaging had to remain freely usable for all competitors, even though the trademarks are traffic-enforced for the respective owners – in other words, they are predominantly connected to Ritter or Dextro Energy by the market. 

According to trademark law, signs can also be protected as trademarks consisting of the shape of a good or its packaging. However, a limit is reached if the shape is conditioned by the nature of the goods themselves or is necessary to achieve a technical effect. The BGH did not approve of the BPatG's view that all the essential features of the product forms shown in the trademarks in the case of Ritter Sport were due to the nature of the goods themselves and in the case of Dextro Energy had technical functions. 

The BGH's reasoning states that the square shape of Ritter Sport's chocolate bars is not an essential functional property of chocolate. In the case of Dextro Energy, the judges in Karlsruhe came to the conclusion that the shape and the notches do indeed have practical functions, since they ensure the space-saving transport and portioning at the predetermined breaking points. However, in so far as the "specially shaped corners and edges make the consumption of the tablets more convenient, this does not constitute a technical function but actually a sensory effect during consumption.”

With its decisions, the BGH has for now strengthened the trademark protection of the two manufacturers. The BPatG will now clarify whether other reasons can be brought forward to exclude the shape mark protection.