Trademark Cancellation

Decision of the Federal Patent Court of 16/08/2011, file number: 28 W (pat) 112/10

The mark “Princess” describes merely the registered products in classes like “Jewelry”, since the description should only involve certain products with a special touch. This does not apply to accessories or similar utility or fashion products in a princess-look.

Decision of BPatG (Federal Patent Court) of 29/10/2010, file number: 26 W (pat) 27/06

The cancellation of the coveted trademark “POST”, concerning delivery services, has been rejected by the Federal Patent Court. “POST” can be classified as a trademark since the word, as a denominative mark is adequate to distinguish goods and services. Though, the trademark consists merely of an indication, which may serve to designate a characteristic of the services. However, the protection released from § 8 para. 2 MarkenG (Trademark Act) avoids the cancellation since the word “POST” is established on the relevant field of business.

Decision of BGH (Federal Supreme Court) of 17/09/2009, file number: I ZB 7/09

The Federal Patent Court has ordered the deletion of the mark “Jugendhergerge”, registered since 1998. According to § 50 paragraph 1 together with § 8 paragraph 2 No 1 MarkenG (Trademark Act), such trademarks which lack of distinctiveness for their goods or services must be cancelled. The trademark “Jugendherberge” has no distinctiveness for the registered services “accommodation of guests, catering, travel events, education, entertainment, sport and cultural activities”.

Decision of BPatG (Federal Patent Court) of 14/04/2009, file number: 25 W (pat) 8/06

The fixing of the object value in the brand-juridical cancellation proceedings is to be calculated according to the interest of the general public in the cancellation of the sign. If the affected brand is used, a higher value to be attached is measured, normally with 50,000€.  If the exact extent of the use of the affected brand is not known, no higher value can be settled.

Judgement of BGH (Federal Supreme Court) of 02/04/2009, file number: I ZR 209/06

a) The protection limit of § 23 No. 2 MarkenG (Trademark Act) should be settled within the purpose of obtaining the possibility to all economic parties, to use describing specifications of their products.

b) Because of the use of a describing concept in a sign and according to § 14 paragraph 2 No. 2 MarkenG (Trademark Act), danger of confusion with an older existing trademark which was settled from the describing concept, does not necessarily justify the acceptance of an immoral contract., § 23 No. 2 MarkenG (Trademark Act) ...

Decision of BPatG (German Federal Patent Court) of 22/05/2009, file number: 26 W (pat) 32/08

The applicant is dishonest if, at the registration time, has knowledge of the intention of another, which uses the trademark abroad successfully, to place the trademark in Germany. Knowledge gained from the negotiations between the parties. Particularly, this is the case of business expansion to Germany. The trademark registration serves objectively therefore primarily the encroachment of the development of the competitor. Hence, the trademark should be deleted because of dishonesty.