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

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BGH rotierendes Menü

The decision “Rotating Menu” of the German Federal Court of Justice (FCJ), Jan. 14, 2020, X ZR 144/17, on the subject of graphical user interfaces concretizes what the skilled person reads as disclosed and which features must be disregarded in the analysis of inventive step due to patentability exclusions.

I. Patent and independent claim

The European patent at issue, EP 888 687, protected a TV menu for selecting various menu items arranged along a curved path. The path is only incompletely shown on a screen and is thought to continue outside the screen. Fig. 2 illustrates one implementation form:

The main claim, as articulated and translated by the FCJ, read:

1. The electronic device comprises
1.1 at least one display and
1.2 a controller.
2. The controller is intended to ensure that the display presents a menu.
3. The menu
3.1 is rotating,
3.2 comprises a number of menu items, and
3.3 is provided on the display off center,
3.3.1 so that at least one menu item can be rotated away from the display at any time,
3.3.2 whereby, without changing the format, any number of 
items can be added to the menu.

II. Subject matter of claim 1 obvious

From the prior art, the nullity plaintiff cited European patent application EP 0 626 635, which discloses a graphical user interface with only a partially displayed object wheel for selecting various menu fields:

Indisputably, features 1, 1.1, 3.2, 3.3, 3.3.1 were thereby anticipated in a manner detrimental to novelty. And a controller (feature 2) for controlling a rotating menu (feature 3.1) was also clearly and directly disclosed for the FCJ.

The state of the art regarding feature 3.3.2 was in dispute.

However, the FCJ clearly and directly took from the citation that the menu displayed by means of an object wheel can be extended by any number of menu items. This is surprising, since – as the FCJ itself admits – this feature is not explicitly mentioned in the citation. Nevertheless, it saw this feature in the technical information disclosed there so clearly that it would be read by a person skilled in the art.

On this basis, the FCJ furthermore considered the waiver of a format change when adding menu items, which is additionally defined in feature 3.3.2, to be obvious. How this expansion of the above menu to the up to 500 menu items mentioned in the citation was to succeed without a format change was not explained in the reasons for the ruling. Nevertheless, this reasoning is not completely incomprehensible to the author, especially when only a few menu items are added.

III. Concretizing features for inventive step not to be considered

In its auxiliary request, the patentee additionally claimed the features:

4. The menu is rendered with a perspective,
4.1 in which it appears as if it were in a visible plane that does not extend 
extends parallel to the screen,
4.2 wherein the perspective is achieved by changing either the shape or the 
size of at least one of the menu items.

However, the FCJ did not see these features as contributing to the solution of a technical problem by technical means. This is because rendering the menu in a certain perspective (feature 4.1) and thereby changing the graphic design of a menu item (feature 4.2) would only affect the graphic representation of the information provided. However, this alone would achieve increased user-friendliness without any further technical considerations.

IV. Conclusion

The FCJ thus confirms its previous decisions on the patentability of graphical user interfaces. Features of a GUI without technical contribution are to be disregarded in the analysis for inventive step (GRUR 2011, 125 – Wiedergabe topographischer Information). If graphical elements serve the sole purpose of presenting information in a more comprehensible and accessible manner, without taking into account physical features of human perception of information, they remain without technical purpose and thus meaningless for inventive step (GRUR 2015, 660 – Bildstrom; GRUR 2015, Entsperrbild).

Furthermore, the FCJ provides an example of what the person skilled in the art can read along with the menu item extension, which is considered to be disclosed. This legal figure became known above all through the decisions “Olanzapin” (GRUR 2009, 382) and “Proteintrennung” (GRUR 2014, 758) on the inclusion of the self-evident in a disclosure. Such co-reading – at least as the author understands the current case law – does not solely include one or the other technical term not explicitly mentioned or an unmentioned but standard procedural step. Rather, entire implementation forms can also be read along, provided that these impose themselves on a trained reader when studying a disclosure.

V. The court’s main conclusion

“The instruction to select a display mode for a selection menu on a screen that merely serves the purpose of presenting the displayed menu items and the circumstance that further items may be available in a particularly vivid manner does not concern a technical solution and is therefore not to be taken into account in the examination for inventive step. (Confirmation of BGH, judgment of February 26, 2015 – X ZR 37/13, GRUR 2015, 660 – Bildstrom; judgment of August 25, 2015 – X ZR 110/13, GRUR 2015, 1184 Entsperrbild).”


Author: Dr. Martin Kuschel

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