The square packaging of Ritter Sport Schokolade is the subject of the decisions I ZB 42/19 and I ZB 43/19 of June 23, 2020. They concretize the “substantial value” of a product in connection with a packaging shape used as a trademark.

I. Matter in dispute

Three-dimensional shape marks are registered for the product “chocolate bars” for Ritter Sport Schokolade. They each show a package with a square base area. The plaintiff contested the trademarkability of these shapes and applied for cancellation of the marks.

II.  Process of action

The Federal Patent Court (FPC) had in a first step ordered the cancellation of the trademarks. The signs were excluded from registration under § 3 Sec. 2 No. 1 MarkenG because they consisted exclusively of a shape which was determined by the nature of the product itself.

On appeal by the trademark owner, the Federal Court of Justice (FCJ) cancelled the decisions of the FPC and referred the proceedings back to it. In doing so, the FCJ excluded the impediment of protection of Para. 3 Sec. 2 No. 1 MarkenG. However, the FPC was to examine whether the impediment of protection of Para. 3 Sec. 2 No. 3 MarkenG existed. In the Trademark Law, Para. 3 Sec. 2 reads:

“Signs which consist exclusively of shapes or other characteristic features are not amenable to trademark protection,
1. which are due to the nature of the goods themselves,
2. which are necessary to obtain a technical result, or
3. which give substantial value to the goods."

In this respect, the FPC was now of the opinion that this impediment of protection did not exist and the cancellation requests were rejected. The applicant appealed against this decision to the FCJ.

III. The substantial value of a product

In its rejection of the legal appeals, the Federal Court of Justice explained what constitutes the substantial value of a product. In any case, the square base areas of the packaging do not confer any essential value on the chocolate bars complained of. Although they represent the essential feature of the packaging.

Decisive for the assessment of this question can be the following criteria for goods of the category “chocolate bars”:

- the artistic value of the packaging shape;
- the difference of the packaging form from other forms available on the market;
- a possible price difference compared to similar products; 
- a marketing strategy related to the packaging.

The impediment of protection of ‘substantial value’ is present if it is clear from objective aspects that the consumer’s decision to buy is determined to a large extent by a corresponding feature of the sign – such as the square packaging in the present case.

After evaluating these criteria and on the basis of the FPC ascertainments, the FCJ did not conclude that the square packaging conferred substantial value on Ritter Sport chocolate bars. The purchase decision is not influenced to any great extent by the square packaging. The square packaging does not exhibit any particular artistic value. Significant price differences also cannot be realized. It is true that there is a marketing strategy geared to the packaging, “Square. Practical. Good.” However, this would rather convey information on origin and quality. In other words, exactly what a brand is supposed to convey. However, a substantial value according to the above-mentioned regulation and the above-mentioned criteria cannot be assumed.

IV. Conclusion

The FCJ shows a methodical and differentiated evaluation of the trademarkability of a shape mark according to Para. 3 MarkenG. In doing so, it becomes clear to what extent the substantial value of a product differs from its substantial feature, which is used for trademark protection. Packaging can be a trademark of a product if it does not add substantial value to the product, but still serves as an indication of origin.

Autor: Dr. Martin Kuschel