BGH upholds trademark protection for square design

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In rulings from July 23, 2020, the Bundesgerichtshof (BGH) – Germany´s Federal Supreme Court – confirmed that three-dimensional forms, including the shape or packaging of goods, are capable of benefiting from trademark protection (Az.: I ZB 42/19 and I ZB 43/19).

They can often be found close to each other on the supermarket shelves. One has a square design, the other has a rectangular shape. The producer of the square product had the shape of the packaging registered as a trademark, much to the displeasure of the other producer, which has been trying to have the registration cancelled for years. But these efforts have ultimately been in vain. The BGH has since ruled that the cancellation requests were unfounded and the three-dimensional shape marks continue to benefit from trademark protection.
According to Section 3 of the German Trademark Act (Markengesetz, MarkenG), any sign that is capable of distinguishing the goods or services of one enterprise from those of other enterprises is eligible for trademark registration. This also covers the shape of goods, including their packaging. We at the commercial law firm MTR Rechtsanwälte note, however, that trademark registration may be precluded by grounds for refusal if the signs consist exclusively of shapes or other distinctive features that give substantial value to the goods.
Yet this was not the case with respect to the square shape and packaging of the goods in the legal dispute in question according to the BGH. The registered trademarks were deemed not to consist exclusively of a shape that gave substantial value to the goods. The court held that the only essential feature of the trademark-registered packaging was its square background, which it found did not give substantial value to the product.
The BGH went on to list the key factors that inform this necessary assessment as the product category type, the artistic value of the design, its distinctiveness in comparison to other designs used, a significant difference in price vis-à-vis similar products, and a marketing strategy whose primary focus is the product´s aesthetic qualities.
It ruled that there can be said to be grounds for refusal if objective and reliable sources would conclude that consumers´ decision to purchase the relevant product primarily comes down to this feature. However, the BGH found that this was not the case here, reasoning that consumers perceived the square shape as more of an indication of the goods´ origin, thus giving rise to certain expectations as to quality in their minds. But the design did not give substantial value to the product. Accordingly, the court found there to be no obstacle precluding trademark registration.

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