3D trade marks for string cheese – Distinctive, yet descriptive?

Descriptive trade marks are usually non-distinctive. Situations where a mark is found to be descriptive yet still distinctive are rare. The German Patent Court dealt with such a situation in three recent decisions concerning 3D trade marks for twisted string cheese (cases 30 W (pat) 1/21, 30 W (pat) 2/21, 30 W (pat) 38/20).

Background

Muratbey Gida Sanayi ve Ticaret AŞ (‘Muratbey’) owned the following German 3D trade marks for ‘cheese; processed cheese’:

Trade mark no. 302018015614	Trade mark no. 302018015615	Trade mark no. 302018015279

The applications were filed on 22 June 2018, and registered on 6 March 2019.

In May and June 2018, Muratbey filed for the identical trade marks with the EUIPO. They were rejected because of a lack of distinctiveness (General Court cases T-570/19, T-571/19 and T-572/19).

An undisclosed applicant filed invalidity applications against Muratbey’s German trade mark registrations. It argued, inter alia, that the signs

• Consist exclusively of shapes which are necessary to obtain a technical result (Sec. 3(2) no. 2 German Trade Mark Act (GTMA), implementing Art. 4(1)(e)(ii) of the EU Trade Mark Directive (‘EUTMD’));
• Consist exclusively of shapes which give substantial value to the goods (Sec. 3(2) no. 3 GTMA, implementing Art. 4(1)(e)(iii) EUTMD);
• Lack distinctiveness (Sec. 8(2) no. 1 GTMA, implementing Art. 4(1)(b) EUTMD); and
• Are descriptive (Sec. 8(2) no. 2 GTMA, implementing Art. 4(1)(c) EUTMD).

The German Patent and Trade Mark Office (‘GPTO’) rejected the invalidity applications. The invalidity applicant appealed the GPTO’s decisions to the German Patent Court.

The German Patent Court’s decision

The German Patent Court held that the trade marks were descriptive, thereby invalidating the registrations. The Patent Court considered, but did not accept, the other alleged grounds for invalidation, as follows.

No technical necessity of the shape

Muratbey claimed to be the first company to market string cheese consisting of several strings that stick together without a knot at one or both ends of the strings. The Patent Court found that twisting the cheese strings is not sufficient to keep them from falling apart.

This feature also depends on the texture of the cheese, which must be in the sweet spot between being too hard and too soft for the strings to stick together. Further, the applicant did not explain how the twisted structure prevents the strings from falling apart. Therefore, the judges were not convinced of the technical nature of the twisted shape.

No substantial value of the shape

The Court also rejected the argument that the shape gives substantial value to the goods. ‘Cheese’ and ‘processed cheese’ are staple foods. Their essential value is not determined by their form but, inter alia, the quality of the ingredients, their smell, taste, and the absence of food additives. The shape of the cheese is not deemed a decisive aspect for the consumer’s purchasing decision.

Distinctiveness of the signs

The Court reiterated settled case law on 3D trade marks consisting of the shape of the product. To be distinctive, the shape must deviate significantly from the norm or customs in the relevant sector and, thereby, fulfil the essential function of indicating the commercial origin. It cannot merely be a variant of products already on the market.

The decisive point in time for this assessment is the filing/priority date of the contested trade marks. The applicant submitted various examples of twisted string cheese, which were offered at the filing date. The judges were not convinced that these cheeses were offered in Germany to such an extent that they could impact the average consumer’s perception of the shapes that cheese can have. String cheese might have been more common in other countries at the filing date but not in Germany.

The Court also relied on a survey provided by Muratbey conducted in Germany in 2020, which found that 76.8 % of interviewees never encountered string cheeses like those of the contested trade marks. For these reasons, the judges found the shapes to be distinctive.

Descriptiveness of the signs

The German Patent Court held that a 3D trade mark consisting of the shape of the goods is descriptive of the shape of the goods only where either: (i) the shape does not deviate significantly from the norm or customs of product shapes in the relevant sector; or (ii) if there are special circumstances that show that there is a need of competitors to also use this shape.

In the judges’ opinion, these strict requirements are necessary in order to avoid a conflict with the case law on the distinctiveness of 3D marks set out above. If every product shape, no matter how much it deviates from the norm or customs of the relevant sector, were to describe the product’s shape, and, therefore, fall foul of Sec. 8(2) no. 2 GTMA, the shape of a product could never be registered.

The German Patent Court found that special circumstances existed that rendered the contested trade marks descriptive. For Sec. 8(2) no. 2 GTMA to apply, it is not necessary that the sign already be used by third parties at the application date in a way that is descriptive of the goods. Rather, it is sufficient that the sign could be used descriptively in the future.

The provision applies, e.g., where the sign consists of the shape of a product, which may be unusual in Germany but common in other countries, if there are indications that the foreign products may be marketed in Germany in the future. This requires a prediction, which must be based on the prospective economic development and not on theoretical assumptions.

The applicant presented twisted string cheese – which had a very similar appearance to the string cheese shown in the contested trade marks – at the world’s largest food fair (ANUGA) in Cologne (Germany) eight months prior to the application date of the contested trade marks. Around the same time, the applicant also advertised its products in commercials on German TV channels. Two commercials were also available on the applicant’s YouTube and Instagram channels.

In addition to the applicant’s marketing activities, the German Patent Court considered that twisted string cheese was common at the filing date of the contested trade marks in Turkey, Slovakia, Armenia, Syria, Georgia, Russia, Great Britain, Ireland, Mexico as well as in the USA and Australia.

Further, the judges considered the General Court’s findings in the decisions regarding Muratbey’s identical EU trade marks, namely that the contested signs are just a variant of forms that were already present in the EU.

For these reasons, the German Patent Court held that it is reasonable to assume that twisted string cheese was likely to be marketed to a signifcant extent in the shapes shown in the contested trade marks in Germany in the future.

Comment

A sign that is descriptive is usually considered to be non-distinctive. The General Court even goes so far to hold that a descriptive trade mark is necessarily devoid of any distinctive character (see recently in the Emmentaler case T-2/21 at para. 18). This statement must be qualified. It is true for a trade mark that is descriptive at the filing/priority date. In situations, such as the one discussed above, where the mark is not yet descriptive at the filing/priority date but where it is likely to be used descriptively in the future, the sign can be distinctiveness yet also descriptive.