Think outside the… square?

Another chocolate dispute in trademark matters is ruled by the German Federal Court

Ritter-Sport” packaging are protected as three-dimensional (3D) Trademarks for chocolate bars in class 30 in Germany since 1996 and 2001, respectively:


The applicant, “Milka” requested the cancellation of these 3D-Trademarks for absolute grounds. The DPMA rejected these requests. Milka appealed against those decisions whereupon the BPatG ordered in November 2016 the cancellation of the trademarks, stating that the signs consist exclusively of shapes or other characteristic features which are determined by the nature of the goods themselves.

“Ritter-Sport” appealed against this decision to the German Federal Court (BGH), who stated on 18 October 2017 that the 3D-trademarks do not exclusively consist of a shape determined by the nature of the goods themselves. It referred the case back to the BPatG in order to examine whether the shape confers an essential value to the product. The BPatG found that this ground for refusal did not apply and rejected Milka’s appeals.

Milka has appealed against this finding to the BGH who rendered his decision on 23 July 2020, dismissing the appeals.

The requests for cancellation of the 3D-trademarks are not justified.

According to the Court, the characteristics that have to be taken into consideration when assessing whether a shape confers an “essential value” to the product are in particular:

  • the nature of the categories of goods in question,
  • the artistic value of the shape,
  • its difference in comparison to other shapes generally used on that specific market,
  • significant price differences to similar products and
  • the development of a marketing strategy that emphasizes the aesthetic qualities of the respective trademark.

The invoked ground for refusal (§ 3 (2) No. 3 MarkenG) exists if it is clear from objective and reliable evidence that the “essential value” largely determines consumer’s decision to purchase the product in question.

The BGH analysed if the shape of the packaging determines to a large extent the consumer’s decision to buy the Ritter-Sport chocolate bar by attributing substantial value to it. This analysis refers to prior case law of the BPatG, stating that the packaging itself has no particular artistic value and that there are no significant price differences to similar products. Even if Ritter-Sport has developed a marketing strategy in which the shape of the packaging is combined with the advertising slogan “Quality. Chocolate. Squared.”, the BGH concludes that this is not sufficient to give the shape of the packaging an “essential value” which largely determines the consumer’s decision to purchase the product in question. The BGH does not find any further indications of an essential value of the square-shaped packaging of the chocolate bars at issue.

Hence, the square-packaging for Ritter-Sport chocolate remains protected as a 3D-trademark.

Marie-Christine SIMON