Ritter Sport, Toblerone & Co: Protection against imitation through 3-D trademarks

published on 11 November 2020 | Reading time approx. 4 minutes

by Daniela Jochim

Especially in the confectionery market, characteristic shapes are very popular with companies wishing to differentiate their own snacks from those offered by competitors. Once a particular product shape has established itself as the hallmark of a particular manufacturer, it often gives rise to disputes with imitators. A 3-D trademark can ensure protection in such a case.

• The Federal Court resolves the chocolate dispute: Ritter Sport may retain the square shape of its products as a trademark »

• Toblerone: How many peaks are covered by trademark protection? »

• Conclusion »

Already since 2005 it has been possible to register a three-dimensional trademark (in short: 3-D trademark). A 3-D trademark protects three-dimensional shapes and designs of any kind. This can include both the shape of a product and the packaging of goods.

A distinction should be made between the 3-D trademark, which serves as a sign to identify products and services, and a registered design. The purpose of design protection law is to protect designs against imitations, but it does not provide any indication of commercial origin. In contrast to a trademark, which in principle can be perpetual if the renewal fees are paid in time, the term of protection of designs is limited to a maximum of 25 years.

Therefore, a 3-D trademark is a very attractive tool which makes it possible to secure a monopoly on a certain product shape on a permanent basis. However, trademark protection should not lead to a situation where there is no competition on the market in the long term. The requirements for registering a 3-D trademark are therefore similarly strict. The product itself can only be registered as a 3-D trademark if the shape of the product enables distinguishing it from other products. If this requirement is not met, only protection by means of a registered design is possible.

The European Court of Justice (ECJ) considers 3-D trademarks to be distinctive – and thus eligible for protection – only if the three-dimensional shape departs significantly from the norm or customs of the sector and an indication of origin of an undertaking is discernible (ECJ, judgment of 25 October 2007 - C-238/06 P Devely/OHIM).

Classic examples of successfully registered 3-D trademarks are

• the well-known Coca-Cola contour bottle,
• the Lindt & Sprüngli Golden Rabbit,
• the Nutella glass
• and also the square packaging of Ritter Sport.

The Federal Court resolves the chocolate dispute: Ritter Sport may retain the square shape of its products as a trademark

The aforesaid square shape of the “Ritter Sport” chocolate bar had been, however, the subject of a legal dispute between Alfred Ritter GmbH & Co. KG and its competitor “Milka” for years.

Since 1932, Ritter Sport has been manufacturing chocolate bars in the typical square-shaped packaging. The idea behind it was a practical one – to make chocolate bars that fit into the pockets of the sports jackets fashionable at that time without breaking the bar ^[1].

Since the 1990s, this square shape has also been registered as a 3-D trademark at the German Patent and Trademark Office (GPTO). Since 2011, two trademark cancellation proceedings have been pending, which were initiated by its competitor “Milka”, invoking the existence of absolute grounds for refusal. “Milka” claimed that the simple geometric shape of a square should also be available to other chocolate manufacturers.

After almost a 10 years’ dispute, the Federal Court of Justice has now rejected the trademark cancellation requests with the decisions of 23 July 2020 (I ZB 42/19 and I ZB 43/19) and ruled at the last instance level that the square chocolate shape may continue to be protected as the 3-D trademark.

At the lower instance, the Federal Patent Court had initially ordered the cancellation of the trademarks. It had assumed that the square shape could not be protected as a trademark because such a shape was conditioned by the nature of the product itself. The Federal Court took a different stance. Rightly, chocolate does not necessarily have to be “cast” in a square shape. In the opinion of the Federal Court , Article 3 (2) no. 3 of the Trade Mark Act (MarkenG) could be considered as grounds for cancellation, according to which shapes which give the product a substantial value should not be monopolised in favour of one supplier. But even that is not the case here:

According to the presiding judge Thomas Koch, consumers do not buy Ritter Sport chocolate “just because they like the square shape so much”. The square shape does not give the chocolate any substantial value either, since it has no particular artistic value and does not lead to significant price differences compared to similar products. It is true that the proprietor of the trademark uses the square shape of its chocolate in the well-known advertising slogan “Quadratisch. Praktisch. Gut.”, which could indeed lead consumers to see the shape as an indication of the commercial origin of the chocolate and thus to associate it with certain expectations of quality. However, there are no indications that the square shape in itself confers significant value on the “chocolate” product. Therefore, there are no grounds for cancellation.

Toblerone: How many peaks are covered by trademark protection?

Toblerone vs Twin Peaks case shows that such disputes are not isolated cases and that 3-D trademarks can provoke discussions about their eligibility for protection as well as its scope.

The Swiss chocolate, whose shape is based on the triangular shape of the Matterhorn peak, is protected by a 3-D trademark in the area of confectionery and is known for its shape being a long bar with a series of joined triangles (peaks).

After the weight and thus the shape of the Toblerone bar was changed in England after Brexit for cost-related reasons and the trademark proprietor “Mondelez” faced discontent from Toblerone consumers about this, the British budget retailer “Poundland” launched its own version of the peaked chocolate bar.

The original Swiss product had – like the Matterhorn – one peak, and the copycat product had two. Otherwise, the Poundland version was very similar to the original product in terms of size and packaging. Therefore, “Mondalez” claimed that the look-alike version infringed upon their trademark rights.

“Poundland”, on the other hand, argued that because of its changed shape Toblerone lost its distinctive character and thus the 3-D trademark protection was invalid (anymore).

After a many months long legal dispute, the parties reached an agreement, so a court decision was never passed in this matter. It is initially therefore still debatable whether changes (even if minor) to a product shape can lead to a loss of an already registered 3-D trademark. Certain is, however, that courts will have to deal with such questions in the future.

Conclusion

Ritter Sport still has a monopoly over the “square-shaped chocolate bar”. So in the near future, we will not see “Quadratisch. Praktisch. Gut.” in Milka lilac.

Nonetheless, the Toblerone dispute clearly shows that trademark proprietors should be aware of the fact that 3-D trademarks are “fragile”. In addition to 3-D trademarks, also registered designs can be used for protecting product shapes.