3D-mark protection for Ritter Sport packaging upheld

A 3D-mark protects the shape of a product or its packaging as a trade mark and thus monopolizes it for the owner. Although the shape or any other characteristic can in principle be protected as a trademark, 3D-marks have to overcome high hurdles to be registered. Among other exceptions, a 3D-mark application is refused for protection when the sign consists exclusively of a shape which gives substantial value to the goods. That is when a consumer will purchase a product primarily because of the particular shape and ‘attractive appearance’ of a product. This exception is intended to prevent shapes from being protected as trademarks for an indefinite period.

Ritter Sport is the proprietor of two 3D-marks registered for chocolate bars. They consist of the neutralized square packaging of the chocolate bars "Ritter Sport" and "Ritter Sport Mini" in two different sizes.

The main issue in the Ritter case concerned the question whether the shape of the packaging gives the chocolate a substantive value. This was disproved by the Bundesgerichtshof, which means that the protection has been confirmed as a 3D-mark. The court argued that the packaging is more to be seen as an indication of origin, which is the core function of a trademark. Moreover, the court concluded that it cannot be assumed that the decision of consumers to buy square packages chocolate bars, is primarily determined by their shape, which is one of the important factors establishing substantive value.

The exception of substantive value typically applies to extraordinary aesthetic compositions in design, color or form, as has been decided by the General Court of the EU for example regarding the below depicted shape of a Bang & Olufsen loudspeaker. The General Court decided that the shape cannot function as a trademark, because it gives substantial value to the product.

Although the ruling at hand is good news for the trademark owner, trademark protection for shapes will generally remain difficult to obtain. In many cases, design protection may then be a good alternative. Even though it offers – contrary to a trademark registration - protection for maximally 25 years, a design registration is fairly easy and relatively cheap to obtain. If the object or its packaging is based on a personal intellectual creation, a copyright automatically exists as well.

Our Trademark and Design Attorneys are more than happy to advise you on the possibilities of protecting your design or packaging, to maximize the value of your IP.