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 three-dimensional shape trademarks for glucose ("Traubenzucker").
For the proprietor of the trademark, three-dimensional shape trademarks for the product "glucose" are registered due to the market penetration. The trademark, which is the subject of procedure I ZB 3/17, shows a stack of eight square-shaped panels with a square base, central V-shaped notches and bevelled and rounded corners and edges. The trademark, which is the subject of proceedings I ZB 4/17, shows an appropriately designed individual panel from different perspectives.
After registration of the trademark, the request for cancelation of the trademarks was filed within the German Patent and Trademark Office (DPMA) on the grounds that their form is required to achieve a technical effect in accordance with § 3 (2) No. 2 MarkenG. The German Patent and Trademark Office has ordered the cancellation of the trademarks.
The trademark owner's appeal before the Federal Patent Court have remained unsuccessful.
In response to the trademark owner's administrative appeal, the Federal Supreme Court revoked the contested decisions and referred the proceedings back to the Federal Patent Court.
According to § 3 para. 1 MarkenG, three-dimensional designs 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. 2 MarkenG excludes such signs from trademark protection which consist exclusively of a form which is necessary to achieve a technical effect. The Federal Supreme Court did not approve the Federal Patent Court's view that all essential features of the forms of goods shown in the trademarks had technical functions. Insofar as the specially shaped corners and edges of the tablets make eating more pleasant, this does not have a technical function, but rather a sensory effect on consumption. A trademark cannot be protected as a trademark only if all its essential features have technical functions. As this cannot be ascertained for the design of the edges of the panels and the stacking of the individual panels with these edges, the challenged decisions of the Federal Patent Court were unacceptable in its current form.
Resolutions of 18 October 2017 - I ZB 3/17 and I ZB 4/17