For The Chocolate Junkies And Trade Mark Lovers

Published date26 August 2020
Subject MatterIntellectual Property, Patent, Trademark
Law FirmHaseltine Lake Kempner LLP
AuthorMs Nicole Ockl

There's no accounting for taste. However, a long-running battle about the shape of chocolate came to an end a few weeks ago in July 2020. Germany's highest court, the Federal Court of Justice (BGH), ruled on the trade mark dispute between Ritter Sport and Milka (BGH, 23.07.2020 - I ZB 42/19, I ZB 43/19).

For the few who are not experts in the chocolate cosmos: Ritter Sport started in 1912 as a small familyowned company in the Southwest of Germany, and developed into a successful international business over the last hundred years. Well-known in Germany and worldwide for its delicious chocolate in a square shape, the company is still led by the Ritter family and its recipe for making the great chocolate remains a secret. A principal competitor, Milka, is a Swiss-German brand of chocolate confectionary founded in 1901. It was acquired by US confectionery giant Mondelēz International (formerly known as Kraft Foods) in 1990, and is now a leading milk chocolate bar manufacturer.

People who expect the current dispute to be about registered design rights will be disappointed. However, the often underestimated and overlooked 3D trade mark, specifically German trade mark No. 398 69 970 (applied for in 1998), is the central issue here. Milka questioned the validity of trade mark rights and challenged its German monopoly in respect of its square chocolate bar shape.

Milka won the first round before the German Federal Patent Court (BPatG, 04.11.2016 - 25 W (pat) 78/14), arguing that the trade mark represents a packaging shape which consists exclusively of a shape resulting from the nature of the product itself. Looking back, this initial victory in 2016 generated some false hope ending in bitter setback for Milka when the German Federal Court of Justice (BGH-I ZB 105/16 and I ZB 106/16 - Square Chocolate Packaging I) disagreed and referred the case back to the German Federal Patent Court to reconsider whether the shape was derived solely from the product shape, or served to indicate a commercial trade origin.

This was far from the end of the matter. Milka remained defiant, knowing that the German Federal Patent Court would follow precedent set by the German Federal Court of Justice, it dropped the original ground for cancellation and shifted the basis for the cancellation action to the legal ground...

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