In Austria there is a producer for sweet products famous for its foamy sweets in
the form of a bomb. The outer form of those sweets was denied trade mark
protection back in 1976 since their bomb-form is technically the best way to
produce such sweets out of sweet foam. In 1969 the producer applied for trade
marks for a special transparent packaging with specially designed separated
compartments for the individual foamy sweets, one without such sweets and one
filled with such sweets and claiming trade mark protection for the specific
three-dimensional form. This so-called six pack consists of two rows of three
compartments each. The marks were so registered. The producer sold since then
5 millions of such packages filled with six such sweets per year
continuously and has a market share of 80 %. The packaging is well-known in
Austria since many years.
A competitor sells his similar foamy bombs in identical packages, however, with
twelve compartments in two rows of six. The producer sued for infringement of
his six pack also asking for an interlocutory injunction. Although the first
instance refused the interim injunction, the second instance granted it and now
the Austrian Supreme Court (OGH) confirmed (4 Ob 61/12t of 11 May
2012) since the assumption that the packaging with twelve compartments is a mere
variation of the famous six pack is obvious.
Of general importance in this case is the answer to the defence that these trade
marks concerning packaging were null and void since they "consist
exclusively of the shape which results from the nature of the goods
themselves" (Art 3 para 1 lit e (i) EU Harmonisation
Directive). The OGH pointed to the fact that the European Court of Justice
(CJEU) has already clarified (C-218/01 Henkel) that the packaging can only be
held as a result of the shape of the goods if the goods themselves have no form,
e.g. powders or liquids. Here, the foamy sweets have their own shape, namely
bomb-form so that this rule does not apply.
This is so even when OHIM might be (wrongly?) of the opinion that this ground
for invalidity should under certain conditions also apply when the goods are not
amorphous. But even if this were correct, it would not lead to invalidity here.
This reason for invalidity does only apply when the essential characteristics of
the shape serve a technical function. In the present case, the packaging is
transparent. Transparency here is an essential feature that is not dictated by
The only possibility of invalidity here would be lack of distinctiveness which
can be the case with packaging. However, here this six pack is well known in
Austria and has achieved that status before the defendant came on the market
with his copy. Although this secondary meaning does not date back to the
application date of the trade marks, nevertheless the plaintiff is protected
with his six pack by the Law against Unfair Competition which protects used
marks with secondary meaning.
Some may have thought that only very fanciful packaging is protectable. This
case in interpreting the CJEU decision "Henkel" clearly shows that
this is not the case when the goods have their own shape and distinctiveness is
acquired through secondary meaning.
DI Helmut Sonn