The shape mark can be used to monopolize the shape of a product, provided that the public perceives the shape as a trademark, i.e. as a reference to a specific company, and not just as a possible product shape within the framework of the usual product designs. What distance must competitors maintain from the protected shape so that the third-party shape is not classified as a confusingly similar Trademarks?

In 2011, the Mars Group registered the “Bounty” chocolate bar as a shape trademark in Germany (see illustration). It succeeded in doing so because it was able to prove in an opinion poll that over 50% of the public associated the shape of the chocolate bar with a particular company.

When a competitor presented a “Wish” chocolate bar at the International Confectionery Fair in Cologne that was similar to the “Bounty” bar, the Mars Group filed a Lawsuit for infringement of the “Bounty” shape trademark.

The Regional Court upheld the Lawsuit. However, the Higher Regional Court (OLG) dismissed the Lawsuit. The challenged shape was not identical to the registered Trademarks and was not used as a trademark. In the chocolate bar sector, differences in the shape and dimensions of the products are usually perceived as functional or aesthetic elements, but not as an indication of origin. The contested chocolate bar “Wish” does not deviate significantly from the usual shapes and is therefore not perceived as an indication of origin. Moreover, Mars had only been able to prove a degree of recognition of 53.2%, which is just above the 50% required for market penetration. The distinctiveness was therefore not above average. Taking all these circumstances into account, there was no trademark infringement.

Mars challenged the ruling at the Federal Court of Justice (BGH) and was upheld.

It is true that the contested product shape is not identical to the protected Trademarks because the differences – namely the flatter shape and the wider distortions on the top of the chocolate bar – cannot escape the average consumer. But there is a high degree of similarity because the differences are only recognizable in the direct juxtaposition of the products.

Under these circumstances, it is not necessary to prove that consumers independently perceive the contested shape as an indication of origin – and not merely as an aesthetic or functional design. Rather, it must be assumed that consumers perceive not only the protected shape as a trademark, but also a highly similar shape as an indication of origin and thus as a trademark. This also applies if the registered shape mark does not have a high degree of distinctiveness, i.e. does not have a reputation of significantly more than 50%.

Note: The hurdles involved in registering a shape mark are considerable. In most cases, the applicant cannot avoid proving a degree of recognition of at least 50% by means of an elaborate survey. If the BGH had not opposed the Higher Regional Court’s ruling, the trademark owner’s situation would also be very difficult in infringement proceedings. The following now applies: Anyone who brings a shape onto the market that is highly similar to the protected Trademarks cannot defend themselves with the argument that the trademark owner has not proven that the infringer’s shape is also eligible for trademark protection. Rather, the basic assumption, which cannot be proven, is that the highly similar shape is a Trademarks.

Links: juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py