Case Study Maglite

The German Federal Court of Justice (BGH) dealt with the three-dimensional trademark "Flashlight" in the judgment of 20 November 2003. The design of the "Maglite" flashlight has won several awards. 3D trademarks can be registered if the shape is ordinarily not exhausted, but has a certain "uniqueness". It is legally required that the shape not only looks aesthetic, but is recognized by consumers as an indication of a very specific company.

In its statement of reasons, the BGH states that the court of lower instance, the Federal Patent Court, has not sufficiently considered the combination of the various design elements. The BGH states: "This (flashlight) has a series of design features that are neither due to the nature of the goods, nor technical or value-related. The basic technical form of a flashlight requires a lighting fixture for receiving the light source (bulb) and a battery compartment. By contrast, the trademark applied for has a cylindrical shank, the cylinder-shaped head enlarged with respect to the shank, the conical transition between the shank and flashlight head, the tripartition of the flashlight head through two circumferential notches, two circumferential corrugations in the central head part of the flashlight and a cylindrical sealing cap reduced in size with respect to the shaft. These features are neither used to enable a technical effect nor the achievement of certain properties. Competitors are therefore not hindered in the design of their products nor in the choice of technical solutions or characteristics with which they want to provide their products."

The BGH dismissed the matter for reassessment to the Federal Patent Court. In this second assessment, the Federal Patent Court comes to the conclusion: "the few deviations appear harmonious in the design, but do not rise significantly above the overall shape of the industry's customary standards."

The finding from this is that both in the European environment and in Switzerland, the protection of shape trademarks, especially when it comes to goods or packaging form, is difficult to obtain. Behind this is the problem that shape trademark rights can be eternally protected like ordinary trademark rights (by extending the trademark after the expiration of its term of protection). This is bitten off with patent law (term of protection up to 20 years) or design law (term of protection up to 25 years). Therefore, whenever possible, before market entry, the protection should be checked by a design registration and if possible taken on, since other requirements apply in design law.