“Square Chocolate Bar Packaging” (Quadratische Tafelschokoladenverpackung)
The applicant requesting cancellation can extend his or her cancellation request in the proceeding before the German Patent and Trade Mark Office to other grounds for refusal of protection in a respective application of Sec. 263 of the Code of Civil Procedure. In the appeal proceeding before the Federal Patent Court an admissible appeal may be combined with an extension of the cancellation request under the requirements of Sec. 263 of the Code of Civil Procedure.
The essential features of a good’s shape exhibited in the trade mark or the equivalent shape of the packaging are determined by the type of good itself within the meaning of Sec. 3(2), No. 1, of the Trade Mark Act when they display essential use characteristics that are inherent to the typical function of that type of good and that the consumer could also seek in competitors’ goods. It is not necessary for the shape in question to be indispensable for the function of the respective good and to leave the manufacturer no leeway for a significant personal contribution.
Just as with the absolute ground for refusal under Sec. 3(2), No. 2, of the Trade Mark Act, for the ground for refusal regulated in Sec. 3(2), No. 1, of the Trade Mark Act only such use characteristics are relevant that are significant to the consumer. Significant facilitation of use in packaging, storage and transport by the shape in question are advantages for manufacture and sale of the good, but they do not benefit the user.
The absolute ground for refusal of protection under Sec. 3(2), No. 1, of the Trade Mark Act only applies when the characteristics embodied in the shape (here: square chocolate bar shape) are typical of the use of the respective good and serve the intended use of the good (here: eating a chocolate bar). Advantages arising only in constellations that are atypical of that use (here: carrying a chocolate bar in a jacket pocket for eating on the go) do not represent essential use characteristics and do not trigger the application of the ground for refusal of Sec. 3(2), No. 1, of the Trade Mark Act.