Ritter Sport vs. Milka

On July 23, 2020, German chocolate manufacturer Ritter Sport won a ten-year legal battle with competitor Milka (Mondelēz) after a ruling by the German Bundesgerichtshof (I ZB 43/19 and I ZB 42/19). Ritter Sport is allowed to keep its 3D brand on the square chocolate bar.

BACKGROUND

The German chocolate manufacturer Ritter Sport has been marketing square chocolate bars since 1932.

In 1995, Ritter Sport decided to protect the shape of their chocolate bars under trademark law using a three-dimensional trademark. This concerns the registration in Germany of a square packaging without color, logo or text in class 30 for chocolate.

Because Milka (Mondelēz) also wants to offer chocolate in a square shape, they start a cancellation procedure against this 3D mark at the German patent and trademark office on November 25, 2010. Milka argued that the 3D brand consists exclusively of a shape that is necessary to achieve a technical effect and that the shape gives an essential value to the product.

Initially, the cancellation procedure was successful and the German Patent and Trademark Office ruled on December 13, 2010 that the 3D trademark cannot be protected.

On February 8, 2011, Ritter Sport filed an appeal against this decision and on December 13, 2018, the Bundespatentgericht (25 W (pat) 79/14) ruled that the cancellation procedure was rejected.

 JUDGMENT

Also on appeal, on 23 July 2020 at the Bundesgerichtshof (I ZB 43/19 and I ZB 42/19), Ritter Sport is ultimately right. The cancellation procedure is rejected and the trademark may be kept.

The Bundesgerichtshof ruled that the shape does not lead to price differences, but that the shape of the chocolate tablets is part of Ritter Sport’s marketing strategy, with the Bundesgerichtshof referring to Ritter Sport’s well-known slogan “Quadratisch. Practical. Gut.” (Square. Practical. Good.), and that the consumer sees the shape as an indication of the origin of the chocolate.

CONCLUSION

Ritter Sport has the exclusive right in Germany to use the brand. The marketing of chocolate in square packaging constitutes an infringement of Ritter Sport’s trademark law, at least as far as Germany is concerned. The question is whether other countries will follow the German Bundesgerichtshof.

Ritter Sport has a whole range of different 3D brands of its square chocolate bars in different countries.

Whether the marketing of square chocolate bars infringes on Ritter Sport’s trademark rights will always have to be assessed on a case-by-case basis. It should be considered whether there is a likelihood of confusion for the relevant public.

© 2020, Zoe De Kempeneer for IP Hills

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