The German Federal Supreme Court held that Mars, Inc.’s (“Mars”) three-dimensional “Bounty” shape trademark prohibits competitors from distributing coconut-filled chocolate bars with the typical “Bounty bar shape.”1 Mars’ three-dimensional “Bounty” trademark acquired such a high distinctiveness on the market that a relevant portion of the public recognizes the form of a “Bounty” chocolate bar as indication of origin. Thus, when seeing a chocolate bar with a highly similar shape, the public assigns such a chocolate bar to Mars as well.
Mars was able to succeed in this case by presenting a traffic survey that showed that 53.2% of the public ascribes the typical “Bounty” shape of a chocolate bar to a specific manufacturer. The judgment marks the next step to an effective protection of characteristic shapes and designs.
In 2011, Mars registered the three-dimensional trademark no. 3020 1003 3190 i. a. for non-medicated confectionery, which is designed as follows:
When applying for the registration of the three-dimensional trademark, Mars was able to show that 53.2% of the public recognized the typical shape of a “Bounty” bar as an indication of origin. Specifically, a traffic survey carried out in 2004 showed that 42.7% of all respondents ascribed Mars’ unwrapped chocolate bar to “Bounty,” or its manufacturer Mars, while 6.7% of the respondents ascribed the unwrapped chocolate bar to the Mars products “Mars,” “Milky Way,” or “Snickers.” An additional 3.8% of the respondents stated that the shape of the chocolate bar indicated a specific manufacturer, but could not provide any information on the name of the product or the manufacturer.
In 2012, a competitor of Mars presented a coconut-filled chocolate bar called “Wish” at the International Sweets and Biscuits Fair in Cologne. With the exception of being a little flatter, and having slightly coarser ridges at the top, the unwrapped “Wish” chocolate bar below looked identical to the “Bounty” bar:
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Mars saw a violation of its three-dimensional “Bounty” trademark and filed a lawsuit against the distributor of the “Wish” chocolate bar.
German Federal Court Rules in Favor of Mars
The German Federal Court held that the distributor of the “Wish” chocolate bar violated Mars’ three-dimensional “Bounty” trademark by distributing its chocolate bar. The distributor used a shape highly similar to the three-dimensional “Bounty” trademark for identical goods.
Through its 2004 traffic survey, Mars was able to prove that the three-dimensional “Bounty” trademark has an enhanced distinctiveness, and that a significant portion of the public ascribes the shape of the chocolate bar to a specific manufacturer. Since the differences between the “Wish” chocolate bar and the “Bounty” chocolate bar are recognizable only in a face-to-face comparison of the products, the court assumed that consumers also ascribed the shape of the “Wish” chocolate bar to Mars. However, this is an unlawful use of the Mars trademark.
Conclusions
As the ruling of the German Federal Supreme Court shows, protecting the shape of a product by registering a three-dimensional trademark can be an effective way to exclude competitors from distributing counterfeit products. However, the hurdles for the registration of a shape of a product as a three-dimensional trademark are high. The applicant must be able to prove that the target audience recognizes the origin of the product solely by its shape.
For products that possess a high recognition on the market, it can now be argued that the distribution of a counterfeit product with a highly similar shape is unlawful, as the target audience recognizes the shape of the counterfeit product as a (false) indication of origin.
1 German Federal Supreme Court, judgment dated October 21, 2015 – I ZR 23/14.
