“Ritter-Sport: Protectability of a Packaging Trade Mark”

• a) It does not follow from Sec. 54(2) Trade Mark Act that in trade mark cancellation proceedings an extension of the subject matter of the dispute by further grounds for cancellation is not admissible. If cancellation proceedings are already pending and further grounds for cancellation are asserted, these will instead become the subject matter of the ongoing proceedings subject to the preconditions of the provision applicable mutatis mutandis of Sec. 263 of the German Code of Civil Procedure without initiating new cancellation proceedings. For this reason, it is not necessary to object within two months to the grounds for cancellation added subsequently in order to prevent cancellation.

• b) The ground for refusal under Sec. 3(2) No. 3 Trade Mark Act applies not only to the shape of goods which have a purely artistic or decorative value, but also to shapes of goods which, in addition to an important aesthetic element, also have essential functional properties.

• c) The ground for refusal under Sec. 3(2) No. 3 of the Trade Mark Act applies if it is apparent from objective and reliable evidence that the consumers’ decision to purchase the goods in question is determined to a large extent by the fact that the shape of the goods confers substantial value on them. It is irrelevant whether the shape of the product has a particular economic value for the trade mark proprietor because it has gained acceptance in the trade as an indication of the origin of the product.

• d) In determining whether this ground for refusal applies, the public’s perception is not a decisive factor. Rather, of relevance are assessment criteria such as the nature of the category of goods in question, the artistic value of the shape in question, its difference in comparison with other shapes commonly used on the relevant market, a significant price difference compared with similar products or the development of a marketing strategy which mainly emphasises the aesthetic qualities of the goods in question.