Federal Patent Court, 01.12.2010, 29 W (pat) 163/10
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.
In order to be recognised as a word mark by the DPMA, the respective mark must have a certain degree of originality. In order to avoid infringements of trade mark law, a comprehensive search should be carried out before registering or using trade marks.
The DPMA itself 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.
Distinctiveness within the meaning of Section 8 (2) No. 1 MarkenG is, for example, the inherent (concrete) ability of a trade mark to be perceived by the public as a means of distinguishing the goods and services in question as originating from a particular undertaking and thus distinguishing these goods or services from those of other undertakings.
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 now had to decide whether a decision of the DPMA, which rejected the registration of the word mark "Das Örtliche" due to a lack of distinctiveness and the need to keep it free, should be cancelled.
FactsIn 2008, the word mark "Das Örtliche" was applied for registration as a trade mark in the register kept at the German Patent and Trade Mark Office (DPMA) for various goods and services (classes 9, 16, 35, 38, 41, 42).
By decision, the Trademark Office rejected the application for the word mark pursuant to Sections 37 (1), 8 (2) No. 1 and 2 MarkenG due to a lack of distinctiveness and the existence of a need to keep the mark free.
In the opinion of the Trade Mark Office, the word combination "Das Örtliche", which is generally understood by the public in connection with the goods and services claimed, is understood as a designation for a locally limited directory orientated to these circumstances in the sense of regional or local information.
In contrast to the supra-regional or even the global, the abbreviated version applied for, 'Das Örtliche', makes it clear that all the products or services claimed have the characteristic of originating from the local region or of dealing with a specific geographically limited area.
The name applied for is thus limited to a factual statement on the subject matter, content or area of distribution which is readily recognisable to the public or to an indication of the quality and intended purpose of the goods and services applied for, such as in the case of printed products, data carriers, telecommunications, etc., and is thus in line with comparable word sequences such as "Das Regionale" (BPatG 25 W (pat) 20/05), "Das Erste", etc.
Since it is primarily a matter of descriptive factual information, there is also a need to keep it free. The applicant had not made a sufficiently credible case that these absolute grounds for refusal could be overcome by the alternative assertion that the mark had become established.
Federal Patent CourtIn the opinion of the BPatG, the registration of the word sequence "Das Örtliche" as a trade mark pursuant to Sections 33 (2) and 41 MarkenG in relation to the goods and services claimed would not be precluded by an absolute ground for refusal, in particular also not by a lack of distinctive character or the need to keep the mark free pursuant to Section 8 (2) No. 1 or No. 2 MarkenG.
This is because the main function of the trade mark is to preserve the identity of the origin of the labelled goods and services.
Since the mere absence of any distinctive character constitutes a ground for refusal, a generous standard must be applied, so that any distinctive character, however slight, is sufficient to overcome the ground for refusal.
The decisive factor for the assessment of distinctiveness is the perception of the domestic public concerned, taking into account the perception of the trade and/or the average consumer of the goods or services in question who is reasonably well informed and reasonably observant and circumspect.
It must also be taken into account that the public perceives a sign used as a trade mark in its entirety with all its components as it is encountered without subjecting it to an analytical approach.
On this basis, word marks are devoid of any distinctive character if the relevant public would merely attribute to them a primarily descriptive conceptual content or if they consist of common words or expressions in the German language or a common foreign language which are always understood as such and not as a means of distinguishing them, for example because of their use in advertising or in the media.
Furthermore, signs which relate to circumstances which do not directly concern the goods and services claimed but which establish a close descriptive connection with them and which are therefore limited to a descriptive indication are also devoid of any distinctive character.
The word sequence "Das Örtliche" applied for fulfils these requirements for distinctiveness within the meaning of Section 8 (2) No. 1 MarkenG. This is because it does not have a predominantly descriptive conceptual content for all the goods and services applied for, nor is it an indication that can be used to establish a close descriptive reference to them.
Source: Federal Patent Court
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