The German Federal Court of Justice’s (BGH) recent decision in the Bounty trade mark infringement case, (case reference I ZR 23/14 “Bounty” of 21 October 2015, available here (in German)) concerns the enforcement of a three dimensional or 3D trade marks, here: in the shape of a Bounty chocolate bar (shown below to the left in black and white, the shapes in chocolate brown to the right show the third party shape).   The decision also - yet again - illustrates the importance of consumer surveys in German trade mark law.

The facts of case, which are at first glance reminiscent of the KitKat case, concern the intriguing issue which arises when trying to enforce a 3D mark whereby a potentially infringing product shape is confusingly similar to an earlier registered 3D trade mark but where its use may not be seen as “use of a trade mark” by consumers but would be regarded as mere ornamental use. 

German case law (notably I ZR 45/03 – Russisches Schaumgebäck) has in the past made it clear that use as a trade mark and thus a potential infringement of the origin function is one of the main prerequisites when it comes to enforcing a 3D trade mark based on a likelihood of confusion.  The fact that a 3D trade mark is registered does not by itself lead to the conclusion that the potentially infringing shape is seen as trade mark.

In Bounty, the German Federal Court of Justice now held that where an earlier three dimensional trade mark has acquired distinctiveness proven on basis of consumer recognition of above 50% in a survey then use of a highly similar product shape for identical goods (here: non-medicated confectionary) would amount to “use as a trade mark” to indicate trade origin.  In the case at hand 53.2% of the relevant consumers had recognised the Bounty bar as indicating trade origin back in 2004, which the court considered as sufficient.

In other words, the 2004 survey which had evidenced the earlier 3D trade mark’s acquired distinctiveness also indicated, in view of the court, that the same percentage of relevant consumers regarded the use of the third party 3D product shape as use of a trade mark, as well as that there was a likelihood of confusion.