Federal Patent Court, decision of 2 November 2010, 33 W (pat) 121/0
Pursuant to Section 3 (1) MarkenG, all signs, in particular words including personal names, images, letters, numbers, sounds, three-dimensional designs including the shape of a product or its packaging and other forms of presentation including colours and colour combinations, which are capable of distinguishing the goods or services of one undertaking from those of other undertakings may be protected as trade marks.
In Germany, the German Patent and Trade Mark Office (DPMA) is responsible for the registration of trade marks as the central authority in the field of industrial property protection in Germany.
However, in order to be recognised as a word mark by the DPMA, the respective mark must have a certain degree of originality.
The DPMA therefore examines the trade mark application for absolute grounds for refusal (see Section 8 MarkenG). Absolute grounds for refusal are, for example, the lack of distinctive character of the trade mark, descriptive indications to be kept free for general use, a clear risk of being misleading, signs of public authority contained in the trade mark or an offence against public morality or public order.
The Federal Patent Court (BPatG) is responsible for deciding on appeals against decisions of the DPMA on the granting of patents, utility models, trade marks, etc. The BPatG specialises in the protection of industrial property rights and has nationwide jurisdiction. This is a court specialising in the protection of industrial property rights with the rank of a higher regional court with nationwide local jurisdiction.
In the above-mentioned decision, the BPatG had to decide whether the word mark "astat" may be registered for an impregnating agent, although this term is also used in chemistry for a halogen, which is the rarest element on earth, with a worldwide natural occurrence of only 70mg.
Facts of the Case The complainant was a manufacturer of impregnating agents and applied to the DPMA to register the sign sequence "astat" as a trade mark for a product in its range. The DPMA rejected this request on the grounds that the trade mark lacked any distinctive character for the rejected goods, as it was a descriptive indication that would be understood as such by the public. In particular, the relevant public would understand the term "astat" as an indication that the goods were those containing astatine. Astatine is a radioactive chemical element used in the medical treatment of tumours and as a diagnostic agent. The term "astat" is readily understandable and is plainly descriptive of the goods in question. The appellant, on the other hand, supported its view of registrability with the fact that astatine is the rarest element on earth with a natural occurrence of only 70 mg worldwide. Even with the artificial production of astatine, it was only possible to produce a few micrograms. In addition, the lifespan of the various astatine isotopes is extremely short, with the long-lived isotope having a half-life of only 8.3 hours. The only discussed use of astat is in nuclear medicine, although its use is very limited due to the difficult availability of the substance. In this respect, commercialisation in this field is hardly or only with difficulty possible. Due to the rejection by the DPMA, the appellant filed an appeal with the BPatG.
Federal Patent CourtIn the above-mentioned decision, the BPatG followed the complainant's view. For the goods "chemical products for industrial purposes, namely impregnating agents and chemical products for the automotive sector", the trade mark applied for was sufficiently distinctive and not purely descriptive. Absolute grounds for refusal pursuant to Section 8 (2) Nos. 1 and 2 MarkenG would therefore no longer prevent registration of the trade mark applied for for these goods pursuant to Sections 33 (2) and 41 MarkenG. In view of the properties of Astat, a commercial use of this substance or one of its compounds in the field of impregnating agents and chemical products for the automotive sector appears to be excluded. It was already doubtful whether Astat or a compound with Astat could develop a property at all that would have any kind of useful function for impregnating agents or the automotive sector.
Source: Federal Patent Court
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