BGH: A square shape can also be protected as a trademark
Three-dimensional symbols that represent the shape of a product can be protected as a trademark. That was the verdict of the Bundesgerichtshof (BGH), Germany“s Federal Supreme Court, in two rulings from October 18, 2017 (Az.: I ZB 3/17 and I ZB 4/17).
We at the commercial law firm GRP Rainer Rechtsanwälte note that the three-dimensional shape of a product is capable of being protected as a trademark pursuant to trademark law if the shape is not required exclusively for the purposes of producing a technical effect.
A chocolate manufacturer and a dextrose manufacturer had their three-dimensional symbols registered as trademarks. Competitors of theirs did not want to leave it at that and instead filed an application for cancellation of the trademarks. The dispute ultimately came before the Bundesgerichtshof.
Prior to this, the Bundespatentgericht, Germany“s Federal Patent Court, had ordered that both trademarks be cancelled, it having recognized only technical functions in all of the essential characteristics of the shapes of the products shown in the trademarks. However, the BGH overturned the rulings and referred the cases back to the Bundespatentgericht. It was said that the only symbols that should be excluded from trademark protection are those which consist solely of a shape that is required for the purposes of producing a technical effect. According to the 1st Civil Panel of the BGH, competent to hear cases pertaining to trademark law, among other things, this was neither the case in relation to the chocolate nor the dextrose.
In the case of the dextrose, the Panel held that the specially shaped rough edges of the tablets do not have a technical function but are instead meant to make consumption more pleasant for consumers. This was said to have a sensory effect. The Court went on to say that in the case of the chocolate there was also no essential functional characteristic associated with its square shape. It is possible for even three-dimensional symbols, including the shape of a product, to be admitted as trademarks if they are capable of distinguishing goods and services from one company from the products of another company.
The Bundespatentgericht will now have to rule on whether there are other grounds excluding trademark protection for both of the products.
Trademarks are an asset of significant value to businesses that ought to be protected. However, for this to happen it needs to be assessed whether the conditions for registering a symbol as a trademark are fulfilled. Moreover, rights pertaining to existing trademarks cannot be infringed. Lawyers who are experienced in the field of intellectual property law can advise on all issues relating to registering a trademark and trademark protection.
GRP Rainer LLP www.grprainer.com/en/ is an international firm of lawyers and tax advisors who are specialists in commercial law. The firm counsels commercial and industrial companies and corporations, as well as associations, small- and mid-sized businesses, self-employed freelancers and private individuals worldwide from offices Cologne, Berlin, Bonn, Dusseldorf, Frankfurt, Hamburg, Munich, Stuttgart and London UK.