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In principle, words, names, pictures, letter combinations, numbers, acoustic sound sequences, three-dimensional shapes, product packaging, color combinations, tactile marks, and theoretically also odors can be protected as trademarks.
The most important requirement for protection of a trademark is distinctiveness. However, the trademark itself must be capable of distinguishing other goods or services.
Descriptive indications cannot be registered as a trademark. Furthermore, the trademark may not be deceptive about characteristics of the goods/services, be contrary to public policy, or contain official coats of arms or seals. The use of official coats of arms, flags, seals, test marks is also an administrative offense and thus punishable by law. Official test marks generally bear a coat of arms, for example a federal eagle.
Anyone applying to register a sign or designation as a German or EU trade mark must jump over the hurdles of the absolute grounds for refusal. These determine whether a sign can be registered as a trademark at all. These absolute grounds for refusal are examined by the offices themselves. If an absolute ground for refusal exists, the trademark applied for will not be registered.
The relative grounds for refusal (Section 9 of the German Trademark Act, Article 8 of the EU Trademark Regulation), on the other hand, are not examined by the offices when a trademark application is filed. Whether a trademark applied for can collide with a trademark already applied for or registered or with another property right (e.g. a company logo) must be examined by the trademark owner himself and an opposition filed or, if necessary, a cancellation initiated.
Signs which are absolutely ineligible for protection under Sec. 8 MarkenG or Art. 7 (1) (b) to (k) EU Trade Mark Regulation will not be registered as trade marks by the German Patent and Trade Mark Office (DPMA) and the European Union Intellectual Property Office (EUIPO). Signs will not be registered as Union trademarks even if these absolute grounds for refusal exist only in one part of the European Union, Art. 7(2) UMV. In contrast to the absolute grounds for refusal, the "relative grounds for refusal" are only examined by the offices on the initiative of the owners of earlier rights.
The most important absolute grounds for refusal
The most important absolute grounds for refusal are lack of distinctiveness (Sec. 8 II No. 1 MarkenG or Art. 7 I b) EU Trade Mark Regulation) and descriptive indications which must be kept free. (Sec. 8 II No. 2 MarkenG or Art. 7 I c) EU Trademark Regulation). Both groups of cases are usually examined together by the trademark offices. In addition, practically relevant absolute grounds for refusal are designations which have become customary according to Sec. 8 (2) No. 3 MarkenG or Art. 7 (1) (d) UMV. This group of cases mainly concerns generic designations.
Infringement of morality or public order, Sec. 8 II No. 5 Trademark Law, Art. 7 I f) EU Trade Mark Regulation
Signs which are contrary to morality or public policy are also not registrable as trademarks. The cases are practically rare.
Ex: "Fack Ju Göhte" for goods and services in classes 3, 9, 14, 16, 18, 21, 25, 28, 30, 32, 33, 38 and 41 (ECJ v. 24.01.2018 - T-69/17 - Fack Ju Göhte).
Distinctiveness is the suitability of a trademark to distinguish the applied-for goods or services of one company from those of another company. In the case of company marks, distinctiveness means the suitability of the mark to distinguish one company from another for the industry in question. Distinctiveness is a prerequisite for protectability in the case of trademarks and corporate identifiers.
However, what has been registered as a trademark is considered to have at least weak original distinctiveness (BGH v. 02.042009 - I ZR 209/06 - POST/RegioPost). Registered trademarks are therefore always considered to be eligible for protection. The mere objection in trademark infringement proceedings that the registered trademark is not distinctive at all and therefore not protectable is therefore unsuitable. In this case, only nullity proceedings before the Office or - in the case of EU trademarks - an action for annulment can help (cf. Art. 58 I UMV).
The BGH (BGHZ 167, 278, para 18 - FUSSBALL WM 2006) defines distinctiveness thus:
"Distinctiveness is the inherent (concrete) capacity of a sign to be perceived by the public as a means of distinguishing the goods or services in question as originating from a particular undertaking and thus distinguishing those goods or services from those of other undertakings."
The essential function of a trade mark is to guarantee to the consumer or end user the identity of the origin of the goods or services designated by the mark by enabling him to distinguish those goods or services from goods or services of a different origin without any possibility of confusion. By virtue of its distinctive character, a trade mark may identify the product or service covered by it as originating from a particular undertaking and thus enable that product or service to be distinguished from those of other undertakings (ECJ, Judgment of. 16.9.2015 - C-215/14 - Société des Produits Nestlé/Cadbury UK Ltd).
Distinctiveness therefore means: a sign can be perceived as an indication of origin at all. The sign should be able to identify the goods or services concerned as originating from a particular undertaking.
Distinctiveness is examined independently by the German Patent and Trademark Office (DPMA) and the European Union Intellectual Property Office (EUIPO) for each of the goods or services applied for. If the distinctive character is lacking for a product, this indicates the lack of distinctive character for the associated service (BGH, v 13. 09.2012, I ZB 68/11 - Deutschlands schönste Seiten). Criteria other than distinctiveness are irrelevant. It is therefore irrelevant, for example, a "certain excess of imagination" of the sign applied for (ECJ v. 21.10.2004, C-64/02 - DAS PRINZIP DER BEQUEMLICHKEIT). Designations such as "super" or "ideal" are usually not distinctive.
"SUPERgirl" is not registrable for many goods and services (BGH GRUR 2011,230 - SUPERgirl)
Lack of distinctiveness can only be overcome by proving reputation (or what corresponds to that for EU trademark law: proof of acquired distinctiveness). Sometimes, however, applicants try to overcome the lack of distinctiveness in another way. They then claim in the application procedure that they want to use the applied for sign in a less likely way.
Example: In a German trademark application, the applicant seeks protection for the term.
for, among other things, clothing. The DPMA rejected the application. The designation is not protectable for clothing, the distinctive character would be missing. The designation would be regarded as a decoration and not as an indication of origin. The company said that it was correct to take into account not only the most probable form of use, but also other obvious forms of use. For example, she would also like to put the designation "#darferdas?" on labels. In a use on labels, one would see an indication of origin. In the oral proceedings before the Federal Patent Court, the applicant submitted as an example of use a T-shirt with a sewn-in inner label with the inscription "#darferdas?".
In fact, the BGH had in the past considered the use of a sign on a label as an indication of origin (e.g. BGH v. 10.11.2016 - I ZR 191/15 - Sierpinksi-Dreieck). It was therefore now not so sure whether it had to consider other obvious uses in addition to the most likely one. The BGH referred the matter to the ECJ. The latter replied that the authorities (in the case the DPMA) must take into account all relevant types of use and examine whether in these types of use the sign is considered as an indication of origin (then protectable) or only as a decorative use (ECJ v. 12.9.2019 - C-541/18).
Distinctiveness is always assessed on the basis of the overall sign. This must be taken into account in the case of word and figurative marks. The mere fact that a word/figurative mark is registered therefore says nothing about whether the isolated word component is also eligible for protection. This, in turn, must be assessed on the basis of the distinctiveness of the word element for the goods or services claimed.
Example OLG Frankfurt/M. v. 4.10.2012 - 6 U 217/11 - fishtailparkas:
The word element of the German word-picture mark No. 302009000717 "fishtailparkas" is not protectable due to lack of distinctiveness.
is descriptive for "outerwear" and therefore not protectable as a word and without graphic components (OLG Frankfurt v. 4.10.2012 - 6 U 217/11).
Example Federal Patent Court (BPatG) v. 23.11.2010 - 27 W (pat) 16/10 - MATCHWEAR:
The applicant applied for registration of the designation "MATCHWEAR" as a word mark in the trademark register at the German Patent and Trademark Office (DPMA). The applicant sought protection for, among other things, "clothing, jewelry, jewelry goods as well as textiles and bedding textiles." The DPMA therefore refused registration. It considered the designation "MATCHWEAR" to be descriptive and thus not registrable: "MATCHWEAR" meant "competition clothing" and was therefore merely descriptive. The Federal Patent Court ruled in favor of the DPMA, stating that "MATCHWEAR" lacked distinctiveness (see Sec. 8 II No. 1 MarkenG). In addition, "MATCHWEAR" was a descriptive indication ineligible for protection under Section 8 II No. 2 MarkenG. Therefore, the trademark could not be registered. Only for the field of "bed textiles" the designation is not descriptive and thus only registrable for bed textiles.
Example BGH v. 17.10.2013 - I ZB 11/13 - grill meister
The Federal Supreme Court denied the distinctive character of the applied word and figurative mark for
Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; dairy products; edible oils and fats;
Class 30: Flours and preparations made from cereals, bread; honey; salt, mustard; vinegar; sauces (condiments); spices;
Class 31: Agricultural, horticultural products; live animals; fresh fruits and vegetables; live plants;
Class 43: Services for providing food and drink for guests.
Example BGH v. 21.2.2008 - I ZB 24/05 (BPatG) VISAGE
The term "VISAGE" is descriptive for face cream and thus has no distinctive character. This is because the term "Visage" is also used colloquially in German for face.
Example EuG v. 6.4.2017 - T-219/16 - ViSAGE
"ViSAGE" is also not protectable for devices for body care, massage devices, facial saunas and cosmetic ultraviolet lamps
Example BGH v. 27.4.2006 - I ZB 96/05 (BPatG) FOOTBALL WM 2006
The soccer world association FIFA had registered the term "FUSSBALL WM 2006" as a trademark for a whole range of goods and services. These registrations were largely cancelled again in 2006 because the term "FUSSBALL WM 2006" was descriptive not only for the sports event "Football World Cup 2006", but also for all goods and services associated with this sports event.
Advertising slogans are not subject to stricter requirements than other designations (ECJ, judgment of 21.10.2004 - C-64/02 - DAS PRINZIP DER BEQUEMLICHKEIT). Ultimately, however, advertising slogans must also be perceived as an indication of the business origin (ECJ, judgment of 12.7.2012 - C-311/11 P Smart Technologies ./. OHIM - WIR MACHEN DAS BESONDERE EINFACH). A distinctive character was therefore denied by the case law for the designation "Wir machen das Besondere einfach" for data recording and measuring devices.
However, the mere fact that a designation or statement can also be understood as an advertising slogan does not allow the conclusion that it is therefore devoid of distinctive character (ECJ v. 21.1.2010 - C-398/08 P OHIM/Audi - Vorsprung durch Technik; cf. also ECJ, order of 11.12.2014 - C-253/14 P - BigXtra, para. 36). Thus, advertising slogans can also be protectable as a trademark if they are distinctive. However, longer word sequences are usually not distinctive.
Example BGH v. 1.7.2010 - I ZB 35/09 - The Vision:
The slogan "Die Vision: EINZIGARTIGES ENGAGEMENT IN TRÜFFELPRALINEN" is not distinctive.
Designs are often denied a lack of distinctiveness and are usually not protectable as a trademark. The ECJ has, for example, denied the Birkenstock sole design trademarkability for clothing and leather goods - ECJ v. 9.11.2016 - Birkenstock Sales GmbH/EUIPO:
On June 27, 2012, Birkenstock Sales GmbH had registered the relief-like surface pattern shown above with the International Bureau of WIPO as an IR trademark, inter alia for leather goods, handbags, clothing and footwear. In the IR registration, it had designated the European Union. The design represents a shoe sole. Birkenstock Sales GmbH had stated that it had been using the design for more than 40 years. On August 29, 2013, the EUIPO rejected the extension of the protection right to the European Union. The reason given was that the design lacked distinctive character (Article 7 (1) of the EU Trade Mark Regulation).
The ECJ dismissed the action insofar as it concerned the goods "leather goods, handbags, clothing and footwear" (ECJ v. 9.11.2016 - Birkenstock Sales GmbH/EUIPO). It thus confirmed the decision of the EUIPO. The ECJ also held that the design merged with the appearance for the goods claimed (clothing, leather goods, handbags, footwear). The sign is presented as a series of regularly repeating elements. Such signs are particularly suitable for surface designs. The goods claimed (clothing, leather goods, handbags, shoes) often have surface patterns. The sign would therefore not be perceived as an "indication of origin" (i.e. as a mark), but as a surface pattern. As a trademark, this design for clothing, leather goods, handbags and shoes is therefore not protectable.
Registration practice of designs as trademarks inconsistent
The application of designs as a trademark is indeed often a legal gamble. The various offices decide differently whether a design is protectable as a trademark or not. This is already evident from the trademark that served as the basic application for the international registration of the Birkenstock sole pattern. It was the German trademark 302012022812, registered for, among other things, leather goods, handbags, clothing and footwear. The sign was absolutely identical to the one that the CFI had denied distinctiveness. The DPMA had thus registered the identical design as a trademark. It thus considered the design suitable to serve as an indication of origin and regarded it as protectable under trademark law. The EUIPO, on the other hand, had denied the design of the Birkenstock sole a trademarkability also explicitly for handbags and bags (ECJ v. 9.11.2016 - Birkenstock Sales GmbH/EUIPO, para. 116 et seq.).
The more original and individual a designation is for the product in question, the "stronger" it is. The distinctiveness of a brand can increase if the brand becomes better known, for example through intensive advertising. The brand then becomes "stronger," so to speak. A designation that is descriptive in itself and would be ineligible for protection can therefore nevertheless be registered as a trademark if it has acquired "reputation in the trade" (see below). Likewise, a weak or averagely distinctive trademark may have strengthened its distinctiveness through advertising.
Registered trademarks at least weakly original distinctive character
What is registered is considered to be at least weakly distinctive (BGH v. 02.042009 - I ZR 209/06 - POST/RegioPost). Registered trademarks are therefore considered to be eligible for protection. The objection in trademark infringement proceedings that the registered trademark is not distinctive at all and therefore not protectable is therefore unsuitable.
Signs or elements of signs which are devoid of distinctive character in a language of the European Union are not protectable as Union trademarks (Art. 7 II UMV; ECJ v. 20.9.2001 - C-383/99 - Baby-dry).
Signs which the German public does not recognize as descriptive are distinctive and protectable as German trademarks. The German public is familiar with Italian terms frequently used in Germany such as "Monte" (BPatG v. 18.05.2022 - 26 W (pat) 28/17 - MONTES/Vino Monte) or "gusto" (BPatG v. 8.12.2022 - 30 W (pat) 533/21 - GUSTA). It does not know terms that are not typically used in Germany, e.g. "Oro" (cf. LG Hamburg v. 18.7.2018 - 312 O 398/16 - OROCHATA).
A lack of distinctiveness as an absolute ground for refusal can only be overcome by proof of reputation (or what corresponds to this for EU trademark law: proof of acquired distinctiveness).
Signs which are not originally distinctive (Sec. 8 (2) No. 1 MarkenG/Art. 7 (1) b UMV), descriptive indications (Sec. 8 (2) No. 2 MarkenG/Art. 7 (1) c UMV) and designations which have become customary (Sec. 8 (2) No. 3 MarkenG/Art. 7 (1) d UMV) may nevertheless be registered as trade marks if the trade mark has become established or has "acquired distinctive character" in the relevant public through the use made of it in relation to the goods or services for which registration is sought . The "acquired distinctiveness" in Art. 7 (3) UMV corresponds to the "acceptance by the public" in Sec. 8 (3) MarkenG (cf. BGH of 21.2.08, para. 26 - I ZB 24/05 - VISAGE, ECJ of 11.03.2003 - C-40/01 - Ansul).
The concept of "use" is the same as for "use preserving the right" according to Art. 15 (1) CTMR/ Sec. 26 (1) Trademark Act (ECJ v. 18.04.2013 - C-12/12 - Stofffähnchen III, para. 30). The case law requires as a basic rule a public awareness of at least 50% (BGH v. 21.2.08 - I ZB 24/05 marginal no. 25 - VISAGE), but in the case of plainly descriptive indications significantly higher (BGH v. 2.4.2009 - I ZB 94/06 (BpatG) Kinder III).
In many cases, this traffic awareness can only be proven by submitting a demoscopic traffic survey (BGH VISAGE loc. cit.). The requirements for this traffic survey are therefore quite high. The traffic survey conducted must indicate the proportion of the relevant public that recognizes the product as originating from a particular company on the basis of the trademark. These circles of the public are first and foremost the end users of the goods applied for. The decisive factor is what the goods applied for are usually used for. For example, if a trademark is applied for "soaps", the traffic survey may not be limited to women, because men also buy and use soaps (BGH VISAGE loc. cit.).
In addition to such a traffic survey, the market share held by the trademark, the intensity, distribution and duration of use of this trademark, the advertising effort of the company for the trademark (in this regard, e.g. BPatG v. 28.11.2012, 29 W (pat) 524/11 - Landlust) as well as statements of chambers of industry and commerce or of other professional associations may also be taken into account (BGH VISAGE loc.cit.). In the case of very well known trademarks, the submission of many court decisions showing that the trademark is very well known may also be sufficient (cf. BpatG v. 21.9.2004, 27 W (pat) 212/02 for three stripes on sports pants as a position mark of adidas AG).
Example of trademarks registered by successful proof of traffic enforcement:
German color mark 39552630 "Magenta", of Deutsche Tele-kom AG, among others, for telecommunications services;
German word mark "POST" for, among other things, the transport and delivery of letters, parcels and small packages.
Community trademark 003517612 of adidas AG for goods class 25 (clothing, footwear, headwear) as position mark
Proof of distinctiveness for EU trademarks
In the case of EU trademarks, the distinctive character must be present in all member states (cf. (ECJ v. 22.06.2006 - C-25/05 - Storck/HABM). This means that in those parts of the member states where there was no distinctive character (original) from the beginning, there must be a distinctive character (reputation) acquired through use (ECJ v. 25.07.2018 - C-84/17 - Nesté/Mondelez).
However, this does not mean that the applicant or trademark owner can also prove distinctiveness separately for each individual member state. This is because often several linguistic or cultural states are combined in one distribution network (cf. ECJ v. 25.07.2018 - C-84/17 - Nesté/Mondelez). It is therefore sufficient to prove that overall distinctiveness has been acquired in all member states of the Union (ECJ v. 24.05.2012 - C-98/11 - Lindt & Sprüngli v OHIM).
Problems arise if mistakes were made in the registration procedure and protection was granted to a trademark that is in itself not registrable. An example: An EU trademark which is in itself ineligible for protection is registered because the EUIPO has granted it reputation under Art. 7 III CTMR. In fact, however, the trademark owner had not proved at the time of registration that the EU trademark had actually acquired distinctive character in the entire EU. In opposition proceedings before the DPMA arising from such an EU trademark, the opponent must therefore prove that the trademark has also acquired distinctive character through use in Germany. Otherwise, its mark will only be considered weakly distinctive and will accordingly have a low scope of protection, which means that a likelihood of confusion is more likely to be assumed (BGH v. 09.11.2017 - I ZB 45/16 - OXFORD/Oxford Club).
Proof of acquired distinctiveness in the case of marks of use
The acquired distinctiveness also plays a role in the case of trademarks created through use, so-called "marks of use" according to § 4 No. 2 MarkenG.
Descriptive indications are an absolute ground for refusal in a trademark application according to Sec. 8 (2) No. 2 MarkenG/Art. 7 (1) c Union Trade Mark Regulation (UMV). They more or less describe the goods or services according to their nature, quantity or time of origin. Such indications need to be kept free and cannot be registered as an EU or German trademark.
It is in the interest of the general public that all signs or indications which are descriptive of characteristics of the goods or services applied for may be freely used by all undertakings (cf. ECJ v. 12.2.2004 - C-265/00 - BIOMILD, para. 35). It is sufficient that a word mark designates a characteristic of the products concerned in a customary and intelligible manner (ECJ v. 23.10.2003 - Case C-191/01-DOUBLEMINT, para. 32). Here, the understanding of the trade alone may also be sufficient. Any competitor must be able to freely use descriptive indications (ECJ v. 9.12.2009 - C-494/08 - PRANAHAUS, para. 25; BPatG v. 14.11.2012 - 28 W (pat) 518/11) - protectability of the designation M).
A disclaimer in the trademark application excludes the scope of protection of a trademark for certain goods and services in the list of goods and services. However, a disclaimer in the trademark register can only be entered under certain conditions. Restrictions that exclude only certain characteristics of the goods are excluded. This is because it would lead to unacceptable legal uncertainty as to the scope of trademark protection.
Examples of registered and rejected disclaimers
For example, the following disclaimers have been registered in the trademark register so far:
"all the aforementioned services, except in relation to bicycles and related subjects" (DPMA Register No. 30730576).
"except sportswear" (BPatG v. 17.05.11 - 27 W (pat) 536/10
The following disclaimers, for example, have NOT been registered in the trademark register so far:
"excluding goods with a light beige hue" (BPatG v. 15.02.11 - 27 W (pat) 568/10).
"puddings and ice cream excluding those in the shape of a heart" (BPatG v. 08.02.12 - 25 W (pat) 91/09)
Restriction of the scope of protection of a trademark by means of a disclaimer
The limitation of the scope of protection of a trademark by a disclaimer is legally ineffective and cannot limit the scope of protection of a trademark. This is because it would impermissibly exclude in advance the finding of a likelihood of confusion (ECJ v. 12.6.209 - C-705/17 - Patent- och registeringsverket/Mats Hansson).
Example: A disclaimer which, at the request of the Intellectual Property Office, Sweden (Patentoch registreringsverk), excludes an exclusive right to the designation "Roslagspunsch" for alcoholic beverages because the term "Roslags" refers to a region in Sweden and the term "Punsch" is descriptive of one of the goods covered by this registration is without effect for the examination of a likelihood of confusion under trademark law (ECJ loc. cit.).
A trademark must be used before expiration of the initial five-year grace period for use. In the case of the German registered trademark, the period begins as soon as no further opposition can be filed against the earlier trademark or the opposition proceedings have ended (Sec. 26 MarkenG). In the case of the EU trademark, the period begins with the registration (Art 18 UMV). After that, a trademark owner risks serious consequences of non-use.
Each trademark application can start a new grace period for use. For trademark owners who have not seriously used their trademark so far, or who never intended to do so because the trademark was only intended to serve as a basis for warnings and claims for damages, the renewed application of the trademark for the same goods or services may be tempting. Now the trademark owner is again spared proof of use for five years. Case law takes a differentiated view of reapplication. If the newly filed trademark is not identical with the older one, e.g. because the younger application concerns a word-figurative trademark whereas previously a pure word trademark was filed, there is no repetition application. The same applies if the geographical area does not match. Therefore, it is not a repeat application if, after filing a German trademark application, an identical sign for identical products is filed as an EU trademark (see BGH v. 24.11.2005 - I ZR 28/05 - GALILEO).
The case law on repeat trademarks
The Federal Patent Court is reticent on the question whether a repeat application is an indication for the ground for cancellation of the trademark application in bad faith (cf.BPatG v. 15.11.2017 - 29 W (pat) 16/14 - YOU & ME). The Court of Justice of the European Union (CFI) has now expressed itself more clearly in the judgment of 21.04.2021, T-663/19 - MONOPLOY. In the case, the game manufacturer Hasbro had applied for the word mark "MONOLOPOLY" over a period of more than 20 years in four trademark applications for partly identical goods and services, including games. A Croatian game manufacturer, which marketed the board game "Drinkopoly", applied to the EUIPO to have the most recent trademark declared invalid. It was said to be a repeat application in bad faith. Other reasons than evading the duty of genuine use were not apparent. The EUIPO had partially declared the trademark invalid, including for games. Hasbro took legal action against this before the ECJ. The ECJ first clarified that not every repeat application is automatically in bad faith. However, it is bad faith to apply for a trademark repeatedly in order to circumvent the proof of use. Therefore, good reasons are needed for a repeat application.
The ECJ therefore asked Hasbro about the motives for the new application. Hasbro claimed that the new application would make it easier for it to administer the trademarks. This did not make sense to the ECJ. After all, multiple trademarks cost more working time and more money. The action was therefore dismissed. The trademark is therefore no longer in force for some of the goods, including games.
Since the offices do not check whether a registered trademark may also be used or would rather lead to a trademark infringement, a trademark search is strongly recommended before filing a trademark application.