DECISION • TRADE MARK LAW
‘‘Square Chocolate Bar Packaging’’ (Quadratische
Decision of the Federal Supreme Court (Bundesgerichtshof)
18 October 2017 – Case No. I ZB 105/16
Trade Mark Act, Sec. 3(2), No. 1; Code of Civil Procedure,
Ó Max Planck Institute for Innovation and Competition, Munich 2018
Keywords Cancellation request Á Essential features of a good’s shape exhibited in
the trade mark Á Packaging shape Á Absolute ground for refusal of protection Á 3D
(a) The applicant requesting cancellation can extend his or her cancellation
request in the proceeding before the German Patent and Trade Mark
Ofﬁce to other grounds for refusal of protection in a respective application
of Sec. 263 of the Code of Civil Procedure. In the appeal proceeding before
the Federal Patent Court an admissible appeal may be combined with an
extension of the cancellation request under the requirements of Sec. 263 of
the Code of Civil Procedure.
(b) The essential features of a good’s shape exhibited in the trade mark or the
equivalent shape of the packaging are determined by the type of good itself
within the meaning of Sec. 3(2), No. 1, of the Trade Mark Act when they
display essential use characteristics that are inherent to the typical
function of that type of good and that the consumer could also seek in
competitors’ goods. It is not necessary for the shape in question to be
indispensable for the function of the respective good and to leave the
manufacturer no leeway for a signiﬁcant personal contribution.
(c) Just as with the absolute ground for refusal under Sec. 3(2), No. 2, of the
Trade Mark Act, for the ground for refusal regulated in Sec. 3(2), No. 1, of
the Trade Mark Act only such use characteristics are relevant that are
signiﬁcant to the consumer. Signiﬁcant facilitation of use in packaging,
storage and transport by the shape in question are advantages for
manufacture and sale of the good, but they do not beneﬁt the user.
Translation Allison Felmy.
IIC (2018) 49:612–620