Bitter-sweet trademark decision in Germany regarding the shape of dextrose sweets

Things went from sweet to sour when a German patent court cancelled a shape mark for sweets based on its ‘mere technical function’.

This decision, handed down by the Federal Patent Court in Germany (“FPC”) in December 2016, related to a trademark registered over the shape of dextrose tablets. The mark was registered in 2003 and was based on the trademarks acquired distinctiveness.

In its decision, the FPC considered a request for cancellation of this mark, which was based on two principal arguments – firstly, that the trademark lacked distinctiveness, and secondly that the mark was registered contrary to the requirements of Section 3 no. 2 of the German Trademark Act. According to this section, trademark registrations consisting exclusively of a shape necessary to obtain a technical result, are not allowed in Germany.

The FPC did not need to consider the first argument since it decided to uphold the latter one. In its decision, the court held that the trademark should be cancelled because it did ‘exclusively consist of a shape necessary to obtain a technical result’. The same conclusion was reached earlier on by the German Patent and Trademark Office.

The FPC rejected the argument that sweets could not have a technical function. Instead, it held that the shape of the sweets depends mainly on consumer’s preference concerning the ease of handling of the product, its storage, portioning and consumption. The FPC decided that even though the development of the product may involve design considerations as to its shape, this does not in itself mean that the shape does not have a mere technical function. Trademark protection cannot be granted if a particular shape is equally necessary to obtain a technical result and the result of design considerations.

The shape in question was 3D, and its key features which the FPC considered to be necessary to obtain a technical result were as follows:

  • cube shape – the purpose of which was to make it easy to store and package dextrose products;
  • bevelled edges – aimed at making the consumption easier and more appealing; and
  • indentation in the middle – the purpose of which was to make it easier for consumers to break the sweet into smaller sections (which is a technical function often used in sweets of this type).

The FPC used a similar reasoning in its recent decision to cancel another trademark registration belonging to the same owner (also in relation to its dextrose sweets). The appeal to the Federal Supreme Court has been allowed in both cases – the FPC decision may still, therefore, be challenged.