July 2012

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 function.

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