German confectioner Ritter Sport, has won a ten year trade mark dispute against Milka, its Swiss rival over the unique square chocolate bar shape, following a ruling by the Federal Court of Justice in Germany.

BACKGROUND

Ritter has used the  square shape for decades and Clara Ritter (of the Ritter family) is quoted as saying  “Let’s make a chocolate bar that fits in your jacket pocket, doesn’t break, and weighs the same as an oblong bar” in 1932.

Its slogan, created in 1970 and still used today, is “Quality. Chocolate. Squared”. The fact that the slogan contains the word “square” is indicative of just how important the square shape is to the identity of the Ritter brand.

The Ritter family registered the shape as a three-dimensional shape in 1993 with the German patent and trademark office.

Trade Mark 39525789

Mondelez, the American confectionary giant which owns Milka, along with other brands such as Toblerone and Cadbury, attempted to challenge Ritter’s trade mark on the grounds that the quadratic shape was an essential functional characteristic and therefore not capable of having trade mark protection.

In 2010, Milka started a marketing campaign for a square bar. It was at this stage that the dispute between the two chocolate brands started. Ritter sued Mondelez (previously known as Kraft) for selling a similar quadratic bar in the same year.

To Ritter’s dismay, Mondelez was then successful (on the second attempt) in getting the Ritter trade mark removed from the German Patent and Trademark Office’s register in 2016. However, this ruling was later abrogated by the German Federal Court of Justice the following year and the Ritter mark survived .

Finally, in at the Federal Court of Justice, and after 10 years, Ritter has succeeded in keeping its coveted trade mark .

THE LAW

Three dimensional shapes can be registered as trade marks if the shape has an inherent distinctive character i.e. the product can be recognised by its shape alone without any reference to the brand itself. It was this concept that was drawn to the Court’s attention.

Mondelez argued that the square shape  was a functional part of the bar (e.g. it fits very well in a sports jacket, unlike a traditional bar and its  structure does not break easily). Ritter argued otherwise, that the shape was not technical, but had aesthetic distinctive character.

The case hinged upon the interpretation of article 3 of the German Trade Mark Act, which states:

“1) All signs, particularly words including personal names, designs, letters, numerals, sound marks, three-dimensional designs, the shape of goods or of their packaging as well as other wrapping, including colours and colour combinations, may be protected as trade marks if they are capable of distinguishing the goods or services of one enterprise from those of other enterprises.

(2) Signs consisting exclusively of a shape

  1. which results from the nature of the goods themselves;
  2. which is necessary to obtain a technical result; or
  3. which gives substantial value to the goods

shall not be capable of being protected as trade marks”.

THE DECISION

The trade mark was initially deleted by the German Federal Patent Court in 2016 on the grounds that the square shape resulted “from the nature of the goods themselves” i.e. the chocolate itself.

However, the German Federal Court of Justice found otherwise in 2017 stating that the shape of the chocolate by itself would not be of any use to a consumer and was therefore not an essential functional characteristic, but rather a design.

In the final hearing the Court ruled that it was part of Ritter’s history and its essential character, adding that the shape had no artistic value nor led to price differences. The Court also said that consumers would consider the Ritter chocolate bar shape as a marker of where the chocolate came from as well as its quality.

This case is similar to the 2018 Nestle/Kit-Kat decision over the shape of the 4 breakable ‘fingers’ which you can read here, although in this case Ritter successfully argued that its shape was distinctive enough to garner trade mark protection unlike Nestle (who also came up against Mondelez) who failed to keep their 4 breakable fingers design as a three dimensional mark.