Golden gummy bears and square chocolate bars: The Federal Court of Justice on the trademark protection of product designs for foodstuffs

Ritter Sport remains the only square chocolate on German supermarket shelves, whereas the Goldbear goes empty-handed. We come across the latter in trade in both fruit gummy and chocolate form, albeit from different manufacturers. Hardly any other decision of the Federal Court of Justice [Bundesgerichtshof, “BGH”] has caused as much of a stir in recent years as the proceedings brought by Haribo against Lindt and Milka against Ritter Sport. What's the chocolate bar got that the bear hasn’t? And what conclusions can be drawn from this with regard to the protection of product designs for food and beverages by registration as trademarks?

The dispute over Lindt Teddy

In 2012, the confectionery manufacturers Haribo and Lindt disputed over sweets in the shape of bears. Haribo distributes its so-called "Gummibärchen" [“gummy bears”] and is the owner of the word marks "Goldbären", "Goldbär" and "Gold-Teddy" for sweets. In 2011, Lindt, based on its well-known "Goldhasen" [“golden rabbit”] – then launched a chocolate figure in the shape of a sitting bear with a red neck ribbon, wrapped in gold foil, which the manufacturer itself called a "Lindt Teddy".

Haribo was of the opinion that that teddy infringed the above-mentioned marks and constituted an unfair imitation of its gummy bears. The Federal Court of Justice (BGH, ruling of 23 September 2015, docket No. I ZR 105/14) was of a different opinion: although the “Goldbär” trademark and the juxtaposed product of the golden teddy bear are very similar, there is no likelihood of their being confused. If, as in this case, a word mark and a three-dimensional product design are juxtaposed, then only the semantic content has to be taken into account. Accordingly, a similarity presupposes that, for consumers, the word mark is an obvious and conclusive designation for three-dimensional product design. However, it is not sufficient if the word mark is only one of several obvious designations of the product form. In the case of the Lindt Teddy, not only the terms "Goldbär" and "Goldbären" [“gold bear(s)”] came into consideration (when questioned, only 8.5% of the consumers contacted actually used these terms), but also designations such as "Teddy", "Schokoladen-Bär” [“chocolate bear"] or “Schokoladen-Teddy” ["chocolate teddy"]. The BGH therefore proceeded on the basis that no mental association was made between Haribo's word mark and Lindt's product.

The cancellation action against the Ritter Sport square chocolate bar

In the case of Ritter Sport, its direct competitor Milka brought an action for cancellation of its three-dimensional shape mark: This shows - registered for chocolate bars - the front and rear of a neutralised packaging with a square base and two side closure flaps and a further closure flap on the rear. Milka was of the opinion that this characteristic shape of packaging was not eligible for protection as a trademark because it was a sign consisting exclusively of a shape. This gave the good a significant value.

The BGH (decision of 23 July 2020, docket No. I ZB 42/19) took the view, however, that these conditions are not met in the case of the challenged Ritter Sport mark. The mere design of the packaging in the form of a square does not represent a significant value in relation to competing packaging. Here, the focus is not on an aesthetic feature, but solely on the recognition value and thus the origin function of the brand. In other words: the square shape of the packaging does not give the goods any significant value in the sense of a significant price difference vis-à-vis similar products on grounds of a particular artistic or design (added) value. In the opinion of the Federal Court of Justice, the cancellation of the square shape trademark of the competitor Ritter Sport sought by Milka failed because the consumer's purchasing decision is not primarily determined by the square packaging. Rather, the consumer sees in this packaging - not least because of the marketing strategy with the well-known advertising slogan "Quadratisch. Praktisch. Gut." [“Square. Practical. Good”] - an indication of the chocolate’s origin from a specific company and thus associates certain quality expectations with it.

What’s the square got that the bear hasn’t?

As different as the asserted claims and procedures may be, they both ultimately concern the question of whether it is possible to grant trademark protection to specific product designs. The answer to this question will come as somewhat of a surprise - especially to non-lawyers: it depends.

As the Haribo case shows, the protection of a product design via a (possibly descriptive) word mark is problematic. Thus, too general a meaning can lead to an impermissible monopolisation of product designs. Although this will happen less frequently if general word marks are not chosen, it will hardly be possible for actual trademark protection to develop for concrete, physical and/or colour product designs. For this reason, although a word mark offers extensive protection against the use of similar formulations or designations, it is not very suitable for trademark protection of goods or product designs.

On the other hand, a monopoly cannot be achieved, or is more difficult to achieve, with a figurative mark or a three-dimensional product shape mark, which defines a specific shape of packaging or product. It is therefore advisable to apply for the protection of product designs by filing an application for the very specific design as a trademark - either as a two-dimensional or, where appropriate, also as a three-dimensional image. This is possible for a wide variety of products, as a glance at the register and the decision-making practice of the courts shows: from chocolate bars, cream jars and perfume bottles to belt buckles and even the iconic turquoise boxes and jewellery bags of a world-famous jewellery store.

However, one must ensure - especially when using a (two-dimensional) figurative mark - that the chosen motif is not too general: trademark law does not permit the protection of motifs. Furthermore, the (added) value of the product must not result solely from the shape of the design to be protected.

Therefore, one should follow Ritter Sport’s example and focus on a high value of recognition through an individual product or packaging design as opposed to bears made of real gold!

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