Square chocolate bars

On 18 October 2017, the First Civil Senate of the Federal Supreme Court annulled two decisions of the Federal Patent Court ordering the cancellation of square packaging marks for chocolate bars.

For the proprietor of the trademark, three-dimensional shaped marks are registered as signs for the product "chocolate bar". They each show the front and back of a neutral square packaging with a square packaging body, two serrated side closing flaps and a sealing flap across the back.

After registration of the trademark, request for cancellation of the trademarks was filed within the German Patent and Trademark Office (DPMA). The German Patent and Trademark Office has rejected the applications for cancellation.

The requester for cancellation filed an appeal with the Federal Patent Court against the decision of the German Patent and Trademark Office, claiming that the packaging shown in the trademarks reflects the typical functional characteristics of the chocolate bar packaged therein in accordance with Section 3 (2) No. 1 MarkenG. As a result, the Federal Patent Court ordered the cancellation of the trademarks.

The trademark owner filed an administrative appeal with the Federal Court of Justice (BGH) against the decision of the Federal Patent Court. The BGH annulled the decisions challenged by the trademark owner and referred the proceedings back to the Federal Patent Court.

According to § 3 para. 1 MarkenG, three-dimensional signs can be trademarks. This also applies in principle to three-dimensional signs representing the shape of a product. The provision in § 3 para. 2 No. 1 MarkenG excludes such signs from trademark protection which consist exclusively of a form determined by the nature of the goods themselves (whether the obstacle to protection in the present cases also applies to packaging need not be decided). The square shape of the chocolate bar is not an essential characteristic of chocolate.

Resolutions of 18 October 2017 - I ZB 105/16 und I ZB 106/16

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