After the German Federal Supreme court (FSC) had already determined in an earlier judgment that Ritter Sport’s square packaging for chocolate is not a shape which results from the nature of the goods so that it would have to be deleted from the trademark register (BGH-I ZB 105/16 – Square Chocolade Packaging I), the FSC now had to decide whether this shape gives the goods a substantial value (BGH-I ZB 42/19 – Square Chocolade Packaging II).
The FSC found that the square base areas as the only essential characteristic of the packaging do not give any substantial value to the chocolate within the meaning of § 3 (2) No. 3 German Trademark Law. The decisive criteria for the assessment of this ground for refusal were criteria such as the nature of the goods in question, the artistic value of the shape, its difference in comparison to other shapes used on the respective market, a significant price difference compared to similar products, or the elaboration of a marketing strategy which mainly emphasizes the aesthetic qualities of the respective goods.
However, in the case of the chocolate in question, the square shape of the packaging has no particular artistic value and does not lead to significant price differences in relation to similar products. The marketing with the well-known phrase ‘Square. Practical. Good.’ may indeed lead to a situation in which the square shape of the packaging influences the consumer’s decision to purchase the chocolate. However, that is because consumers recognize the square shape of the product as an indication of the origin of the chocolate as coming from a particular company and thus associate it with certain expectations of quality. That is not covered by § 3 (2) No. 3 German Trademark Law.
In our opinion, a different interpretation of § 3 (2) No. 3 German Trademark Law would to the absurd result that a trademark could become the undoing of its own success as the shape of a product not yet known as a trademark would initially be registered without any problems. However, the trademark could be cancelled precisely when it becomes known and thus fulfils its function as an indication of origin to a particular extent. Consumers will then buy the product with this shape, but not because of the shape. Instead, consumer will buy this product for reasons independent of the shape, such as taste, quality etc. In these cases, however, it is not the form that gives substantial value to the goods concerned.
Companies should therefore feel encouraged to protect their product packaging not only as a design but also as a trademark.