Success in the sale confectionery products depends on their design and the designs of their packages. Quite often, design influences the purchasing decisions of consumers more than taste or quality.
Success in the sale confectionery products depends on their design and the designs of their packages. Quite often, design influences the purchasing decisions of consumers more than taste or quality. In an almost endless range of products, original product and package shapes also offer consumers the desired and necessary orientation. Manufacturers and vendors of confectionery products can purposefully safeguard such functions of design within the framework of an intellectual property rights strategy.
The shape of a product or its packaging is amenable not only to design protection, but, in principle, also to trademark protection as a three-dimensional mark.1 However, the true-to-nature reproduction of a product or packaging shape is often not suitable for individualizing a product according to its origin.2 In contrast to conventional words or figurative marks, the public is more likely to recognize shape of a sweet product as an aesthetic design rather than any reference to its commercial origin. Thus, the shape of the product is devoid of the distinctive character necessary for trademark protection.3
In order to obtain trademark protection, products must differ considerably from the norms or customs of the sector.4 Most confectionery products are designed as simple variants of shapes customary in the industry. They amount to nothing more than the repetition of characteristics typical of confectionery products.5 For this reason, most filled chocolates, chocolate bars, candies, cookies and other confectionery products, in the most diverse designs, have been denied trademark protection.6
Even Haribo’s “Gold Bear” does not enjoy trademark protection in its familiar basic form, but only in special designs, which differ significantly from products of other manufacturers.7 The same applies to packaging shapes.8
For any refusal of trademark protection, it is also important that commercial designs in the interests of the general public9 and for the protection of competitors10 must not be monopolized for individual companies.
If an application is made for a product form as a trademark in connection with a lettering or company logo, its scope of protection in the event of registration is very limited - as the shape usually recedes behind the distinctive word or figurative element. Thus, there is hardly any justification for a likelihood of confusion with identical or similar product designs that do not contain this component. This is especially true if the characters and/or symbols clearly differ on both products.11
Despite the customs of the sector and the lack of distinctiveness, shapes of confectionery products can acquire trademark protection if they have been used as an indication of origin on the basis of their use on the market.12 However, the requirements for awareness are strict. They are set at 50% of the affected trade circles, and are to be determined through an overall view of all relevant aspects (market share, advertising effort, intensity and duration of use, geographical distribution, etc. ) or by means of a consumer survey.
With regard to the necessary investments for advertising and the use of the trademark, and the further costs of a polling survey incurred in the application procedure, due to the secondary meaning for confectionery products, trademark protection by virtue of establishment in trade circles is limited to exceptional cases.13
At best, copyright protection for confectionery products is conceivable only for recipe collections or drawings for products with particularly aesthetic designs. They must comprise personal intellectual creations, which are considerably superior to everyday or crafting products.14 Usually, confectionery products will not satisfy the requirements for “works of applied art.”
However, design protection is suitable for the design of confectionery products customary on the market.
Prerequisites for design protection
In principle, design protection does not arise solely through creation, but arises by filing with the German Patent and Trade Mark Office (GPTO), the European Union Intellectual Property Office (EUIPO) or as an international design at the World Intellectual Property Organization (WIPO).
Certainly, there is limited protection in the EU based only on the commercial use of a design, by making it accessible to the public. However, an application should also be made. It entails a considerably longer (up to 25 years, instead of only 3 years) and broader legal protection (also with respect to good faith copying, not only intentional copying).
The forms of appearance of products and packaging that are novel and unique can be registered.15 They are deemed to be novel if, prior to the date of filing, no other design whose characteristics did not differ significantly was known to the public.16 Designs from other product areas are decisive for this purpose, unless they cannot be known to the specialist groups of the confectionery products sector operating in the EU in the ordinary course of business.17
The novelty of a design is not precluded if it was made known to the specialist groups (for example, at a trade fair) within a period of 12 months prior to registration.18 The novelty period allows the designer to initially test the success of the design on the market. However, if the application is made too late, the design can no longer enjoy protection if this objection is raised in subsequent infringement proceedings. It must also be taken into account that third parties can use a design that has already been disclosed prior to the application as stimulation for their own designs.
A novel design is “unique” if it is sufficiently different from already known forms in the overall impression.19 In doing so, whether there is a variety of designs already present the market is also to be taken into account. This is the case in the confectionery products sector. Thus, the requirements are correspondingly modest.
In application proceedings, the prerequisites for protection of novelty and uniqueness are not examined. Likewise, unlike with trademarks, there are no opposition proceedings. Upon compliance with the application formalities, registration usually takes place in the short term. The applicant has a legal position that makes it considerably easier for it to enforce its claims. If a third party wants to dispute novelty or uniqueness, it must prove this within the framework of infringement proceedings or cancellation proceedings, with a presentation of the previously known ensemble of features. However, when considering novelty and uniqueness, the applicant should take into account the risk of invalidation.
Subject matter of design protection
Confectionery products in imaginative, creative designs are easily amenable to design protection. Design protection refers to two-dimensional or three-dimensional forms of appearance of the entire product or a part thereof, and therefore to the design of the product form (“disegno”), not to the product itself.20 Since a design is an abstract form, it can be detached from the product and applied to other products of the same type or similar products. For example, the design of a square chocolate bar may have different colors and features (for example, “Ritter Sport”).
The concept of “product” also covers packaging, features, graphic symbols and typographic characters.21 Thus, the following in particular are amenable to design protection:
– cookie jars, chocolate boxes, wine gum wraps;
– features, such as bells around the neck of the chocolate rabbit, a loop around the Easter egg;
– logos, characters.
The pictograms, emblems and coats of arms, along with monograms and even pure typefaces, which are important for the design of confectionery products, are also included. However, many such graphical forms and designs are already known; that is, they are no longer “new”.
Scope of design protection
Confectionery products and packaging designs are often registered with embossings, labels or ornaments applied on the surface and entered in the register, as the following examples show:22
The scope of protection of such designs is limited, however, compared to product forms that are registered without supplements. Additional components can significantly influence the overall impression of a product form that it evokes among average observers. As such, when examining the “uniqueness” of a design, they must always be considered. In such cases, the use of identical or similar product or packaging designs, which do not have any additional features or features differing from the registration, cannot be prohibited to third parties.23
In order to make the protection of the registered design as comprehensive as possible, the advice of an attorney, particularly regarding the specification of the presentations and views to be submitted, should be obtained as early as the application process.
A registered design offers rapid, effective and inexpensive protection for confectionery products of all kinds, the importance of which is usually underestimated. In addition to national design protection, which requires a separate registration for each country or is granted through the competition laws applicable in such country, EU Community design and International design are currently available under the Hague Model Agreement. Therefore, for confectionery products, a design application is recommended, because technical protection does not come into consideration for them, and the proof of the trademark use of the product form (which is typically problematic) or even the secondary meaning is not relevant in infringement proceedings.
The Federal Act on the Protection of Designs (Designgesetz) also offers the option of a cost-effective collective registration: up to 100 designs (and an unlimited number of designs for Community designs) can be combined into a single application for different products of the same class of good.24 Different views can be submitted for each design. The photographs or drawings on file are then decisive for the determination of the scope of protection upon entry into the register.
As a rule, the presumed disadvantage of a duration of protection that is limited to 25 years is irrelevant in practice - designs of confectionery products that are adequately presented in the trade, and are thus perceived by consumers, regularly enjoy a high degree of awareness. Accordingly, they are readily copied. Therefore, design protection secures the economic success of new confectionery products during their market introduction and afterwards. Once they have been successfully established on the market, nothing stands in the way of a later trademark application for them.
1 § 3, para. 1 of the German Trademark Act (Markengesetz)
2 see Federal Court of Justice, GRUR 2010, 138 fn. 25 – ROCHER-Kugel
3 § 8, para. 2 of the German Trademark Act
4 ECJ, GRUR Int. 2006, 842 fn. 26 – Storck/OHIM; ECJ, GRUR 2006, 233 fn. 31 – Standbeutel; Federal Court of Justice, GRUR 2004, 329  – Käse in Blütenform I
5 see Federal Court of Justice, GRUR 2007, 780 fn. 28 – Pralinenform; ECJ, GRUR Int. 2006, 842 fn. 29 f. – Storck/ OHIM
6 see OHIM, Second Board of Appeal R 298/2004-2 dated 11/11/2004 – Bonbon; OHIM, First Board of Appeal R 1086/2006-1 dated 8/14/2007 – Biskuit-Keks; ECJ, C-24/05 dated 6/22/2006 – Karamellbonbon; Federal Patent Court, 32 W (pat) 114/05 dated 4/25/2007 – Knoppers; Federal Court of Justice, GRUR 2005, 414, 416 – Russisches Schaumgebäck; OHIM, Fourth Board of Appeal R 737/2002-4 dated 6/10/2004 – Schokolade in Regenschirmform; ECJ T-324/01 dated 4/30/2003 – Schokolade in Zigarrenform; HABM, Fourth Board of Appeal R 1051/2005-4 dated 6/12/2006 – Zweischichtenbonbon
7 GPTO no. 30128008; see also GTPO no. 30168030 - Bonbonform
8 Federal Patent Court, Decision dated 4/21/2011 – 25 W (pat) 72/10, BeckRS 2011, 11389 – Oberlausitzer Schoko-Becher von Riegelein; but see Federal Patent Court dated 3/29/2006, 32 W (pat) 157/03 – Nutella-Glas; GPTO no. 2913183 – Ritter Sport Schokolade
9 § 8, para. 2, no. 2 of the German Trademark Act
10 § 3, para. 2 of the German Trademark Act
11 see Higher Regional Court of Cologne, GRUR-RR 2012, 341 – Ritter Sport/Milka
12 § 8, para. 3 of the German Trademark Act
13 see, for example, Federal Court of Justice, GRUR 2008, 510 fn. 25 – Milchschnitte; Federal Court of Justice, GRUR 2008, 505 fn. 25 – TUC-Salzcracker; Federal Court of Justice, GRUR 2010, 138 fn. 41 – ROCHER-Kugel; Federal Patent Court, GRUR 2011 et seq. - Golden rabbit in neutral presentation; Higher Regional Court of Cologne, Judgment dated 8/15/2014 · file reference 6 U 9/14 – Schogetten; Federal Court of Justice, Judgment dated 10/31/2002, I ZR 138/00 – Knabberbärchen
14 § 2, para. 2 of the German Copyright Act (Urheberrechtsgesetz)
15 § 1, nos. 1 and 2; § 2, para. 1 of the Federal Act on the Protection of Designs (Designgesetz); Art. 4, para. 1 of the Regulation on Community design (GGV)
16 § 2, para. 2 of the Federal Act on the Protection of Designs; Art. 5, para. 1 of the GGV
17 § 5, sentence 1 of the Federal Act on the Protection of Designs; Art. 7, para. 1 of the GGV
18 § 6, sentence 1 of the Federal Act on the Protection of Designs; Art. 7, para. 2 of the GGV
19 § 2, para. 3, sentence 1 of the Federal Act on the Protection of Designs; Art. 6, para. 1 of the GGV
20 § 1, no. 1 of the Federal Act on the Protection of Designs
21 § 1, no. 2 of the Federal Act on the Protection of Designs; Art. 3 b) of the GGV
22 for example, GPTO no. M9710733-0001, M9710708-0001; EU-GSM 002020065-0002
23 § 38, para. 2 of the Federal Act on the Protection of Designs; Art. 10, para. 1 of the GGV
24 § 12, para. 1 of the Federal Act on the Protection of Designs; Art. 37, para. 1 of the GGV