In the aforementioned case, a final ruling was reached by the Federal Court of Justice in Karlsruhe (BGH) after a nine year battle. Milka had already submitted claims to the German Patent and Trademark Office (DPMA) in 2011 in order to have two 3D trademarks which had been registered in the form of square packaging for chocolate bars deleted, and had, in the first instance, won the case before the German Federal Patent Court (BPatG). As the court of last resort, the BGH has now confirmed: the trademark on the square packaging will remain in force.
For the packaging industry, this decision is revelatory as it has now been established that product packaging can feasibly be protected as a trademark.
DOES THAT MEAN THAT PRODUCT PACKAGING ALWAYS CONSTITUTES A TRADEMARK FROM NOW ON?
No, we shouldn’t get confused here. A trademark has to fulfil specific protection criteria. The packaging can only be protected as a 3D trademark if the packaging does not have any significant usage property that is inherent to the specific functions of that article. The only distinguishing feature in the case of RITTERSPORT is its square packaging. This does not give the article any intrinsic value. It is neither particularly artistic, nor does it elicit any significant difference in price when checked against other comparable products. A bottle explicitly designed as a special edition by a designer, for example, could hardly be protected under a trademark. This is because we assume that the customer purchases the product for the packaging.
To register a 3D trademark, it is often also required that the entity registering it proves that the form of packaging has gained market acceptance. This means that the market’s level of awareness of the product is the deciding factor. This process is time consuming and generally involves an expert opinion on market acceptance that certifies that the packaging has a high recognition value. It is my opinion that the patent office has become far stricter over the past few years when it comes to granting trademarks for shapes. For example, if you design a new oval packaging and put it on the market, and you want to secure this packaging shape as a trademark, then it will in all likelihood not get past the patent office unless an expert opinion is submitted proving that the packaging design is sufficiently known on the market.