The Federal Court of Justice (BGH) has announced a final decision in the trade mark dispute between Mondelez (Milka) and Alfred Ritter GmbH & Co. KG has announced a final decision. The dispute over the trademark protection of the Ritter SPORT chocolate square, which has been ongoing for over a decade, has now been decided in Ritter's favour, meaning that the trademark will ultimately not be cancelled.
With the application for cancellation of the two registered trademarks of Alfred Ritter GmbH & Co. KG by the former Milka group Kraft Foods (now Mondelez) at the German Patent and Trade Mark Office in 2010, the A decades-long legal dispute has been set in motion. The central subject of the legal dispute is the registration of the characteristic square shape of the chocolate as a German trade mark, which was registered on 24 May 1995.
Specifically, the protection applies to plain-coloured square packaging with a square packaging body without print, two distinctive, serrated side flaps and a transverse seam for creasing on the back, i.e. a so-called three-dimensional mould mark.
Mondelez sees the protected shape mark as a universal and common shape, i.e. a square, which other food manufacturers also use as a packaging shape. In 2016, the Federal Patent Court ruled in this sense and ordered the trade marks to be cancelled in order to make the square shape available to other manufacturers.
Square packaging protected as a trade mark
The Federal Court of Justice took a different view in its decision of 18 October 2017 and ruled that the square shape was not an essential utilitarian characteristic of chocolate. At the same time, it referred the case back to the Federal Patent Court to clarify the further question of whether the square packaging protected as a trade mark consists exclusively of shapes or other characteristic features that give the product an essential value. The Federal Patent Court answered this question in the negative in 2018 and also rejected the cancellation request in this respect.
Now the Federal Court of Justice has ruled again and confirmed the previous judgement of the Federal Patent Court. The Protectability of the registered trademarks of Alfred Ritter GmbH & Co. KG remain valid and therefore the typical square shape is still reserved for Ritter SPORT chocolate. The decision of the Federal Court of Justice states that „the only essential feature of the packaging of goods registered as trade marks is their square base. These do not add any significant value to the chocolate bars sold in the packaging.“ The Legal complaints were therefore rejected.
Judgement has a signalling effect for branded companies
Matthias Berger, lawyer for trade marks and design law at Fieldfisher Germany (LLP) assesses the judgement positively. „Today's decision by the Federal Court of Justice is a Good news for all brand owners, especially in the area of food and consumer goods. In contrast to the time-limited protection of product and packaging shapes as designs, trade marks offer considerable strategic advantages for securing the exclusivity of the design of products and their packaging due to their practically unlimited term of protection and the binding effect of their registration for the courts.“
„The decision has therefore Signalling effect for all branded companies, who have not registered their own trade marks due to the unclear legal situation regarding three-dimensional shape marks. They should now immediately check their product portfolios to see whether the trade mark protection of product and packaging shapes is an option in light of the new legal developments in order to secure and expand their competitive position.“ Matthias Berger
Source: Fieldfisher (Germany) LLP
