Enforcement of three dimensional marks often faces the problem that, while a conflicting product design may be confusingly similar, it remains doubtful whether this design is used as a trade mark. Use as a trade mark, i.e. use in a way that affects the function of the earlier mark to guarantee the identity of the origin of the goods, is however a prerequisite to enforce legal claims due to likelihood of confusion with the earlier mark. The fact that the latter is registered as a trade mark, does not allow as such the conclusion that the younger design is perceived as a trade mark (cf. BGH, judgment of 3/2/2005 – I ZR 45/03 – Russisches Schaumgebäck).
If however, the owner of the earlier three dimensional mark can prove that the mark has acquired distinctiveness, in particular if more than 50% of the addressed public perceive the design as a trade mark of its owner, then use as a trade mark can be assumed for highly similar designs for identical goods, according to a recent decision from the Federal Court of Justice (judgment of 21/10/2015 – I ZR 23/14 – Bounty = ECLI:DE:BGH:2016:211015IZR23.14.0).
So 3D marks for which surveys have proved such degrees of trade mark perception will be easier to enforce in the future.