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Back to square one? Ritter Sport’s success in registering a 3D trade mark

Back to square one? Ritter Sport’s success in registering a 3D trade mark

2nd September 2020 - Published by Intellectual property team

The importance of registering your 3D trademark

The start of the legal battle between Ritter Sport and Milka goes back to 2010 when Milka challenged Ritter Sport’s monopoly on the square-shaped chocolate bars.

Milka argued that the shape of the chocolate bar was merely a technical function and not something which was protectable as a registered trade mark. The first instance decision ordered removal of Ritter Sport’s trade mark, but this decision was later overturned following an appeal. Milka’s final challenge has now also failed.

The decision of the Federal Court of Justice in Germany was handed down at the end of July 2020. The Court surprisingly sided with Ritter Sport, allowing it to keep its registered mark and three-dimensional monopoly for its square-shaped chocolate. It was decided that consumers considered the square shape of the chocolate to be an indication of its origin and quality. What was of prime importance here was the fact that, for almost 90 years, the square shape has been a real focal point of Ritter Sport’s marketing campaign. For example, its popular slogan translates into “quality, chocolate, squared”.

It should be noted that this recent German decision contrasts with the earlier “chocolate” cases involving Kit Kat’s four-fingered wafer shape and, separately, the iconic 3D triangular pieces of the Toblerone bar. The ruling in favour of Ritter Sport seems to have taken everyone by surprise given that, in the past, Nestle and Mondelez were unsuccessful in their attempts to enforce the rights in the the shape of their chocolates.

In the UK, Mondelez, the owner of the Toblerone brand, sought to challenge the launch of Poundland’s Twin Peaks, an off-brand version of the Toblerone bar featuring two rows of triangular bumps rather than one. Mondelez tried to rely on the distinctive triangular shape of the Toblerone chocolate bar which, as they argued, functioned as a badge of origin to stop the Poundland chocolate bars from going into circulation. It was Poundland’s case that the shape was no longer distinctive enough for the trade mark held by Toblerone to be valid. The fact that this dispute was eventually settled outside of courts may suggest that Mondelez did not want to risk having its mark challenged and possibly doubted the level of distinctiveness in the triangular shape of the Toblerone bar; this may be down to the fact that Mondelez had increased the spaces between each peak of chocolate, thus changing the design. However, as the settlement discussions took place behind closed doors, we will never know the reasons for settlement for sure.

Similarly, in the case against its competitor, Cadbury Schweppes, Nestle sought to register Kit Kat’s four-fingered wafer shape. Here, the European Court of Justice refused Nestle’s attempts by ruling that the shape alone was not how consumers would recognise the Kit Kat snack and, in any event, there was no evidence that the Kit Kat shape was distinctive in every part of the EU. It appears that one of the deciding factors here was that the shape of the chocolate was not visible when it was being picked up from the shelves in its wrapper.

Does the recent German decision therefore change anything in terms of a brand’s ability to register a 3D trade mark? Arguably, it does not. The German Federal Court appears to have departed from the ECJ’s decision in the Kit Kat case and overlooked the concerns that were identified by the court. Similarly, in the Toblerone dispute, concerns were raised by Poundland in respect of the reliance on the triangular bar as a badge of origin; once again, this aspect caused little concern to the German Courts when making the decision in the Ritter Sport case.

In summary, the recent ruling of the German Federal Court means that Ritter Sport will continue to have a monopoly of being the only square shaped chocolate on the German market. However, the position with regard to registration of a 3D trade mark in the UK and EU remains unchanged – achieving such a registration continues to be extremely difficult.

Get in touch with an intellectual property solicitor in Manchester

If you would like to discuss how to protect your brand or how this decision may effect an existing mark that you have, please don’t hesitate to get in touch with our Intellectual Property Department on 0161 838 7816.

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