Trademark Law

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 29/03/2011, file number 27 W (pat) 574/10

The words " Im richtigen Kino bist Du nie im falschen Film” (German for: “In real cinemas you're never in the wrong film“) configure a sentence understandable in common language, which indicates a quality promise. The word order is not concise enough, neither has an ambiguity able to be protected. Thus, any distinctive character is missing.

Decision of BPatG (Federal Patent Court) of 09/12/2010, file number: 25 W (pat) 537/10

The advertising slogan “Mit Liebe gemacht” cannot be registered as a trademark in the areas of the food and stimulants industry since does not provide any distinctive character. The average consumer sees in the phrase a merely advertising slogan with a purchase incentive or quality specification. The consumer is constantly confronted here with advertising.

Decision of BPatG (Federal Patent Court) of 19/10/2010, file number: 25 w (pat) 200/09

The mark “Kaffeerösterei Freiburg” cannot be protected as a trademark since this would be contrary to the protection of the § 8 para. 2 MarkenG (Trademark Act). “Kaffeerösterei Freiburg” merely describes that the offered goods and services are those produced in a coffee roasting in Freiburg. The necessary distinctive facts regarding the origin from a particular company are missed.

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 BPatG (Federal Patent Court) of 23/04/2008, file number: 26 W (pat) 117/06

The name “Pontifex” cannot be registered as a trademark for beer. Since in an important number  of situations the name “Pontifex” is used with matters related with the pope, the use of the name as a beer brand would not only be a gross breach of taste, but also a could be offensive from the religious point of view.

Judgement of BPatG (Decision of the Federal Patent Court) of 20/07/2010, file number: 33 W (pat) 65/09

The advertising slogan "KEEP THE CHANGE" is registered as a trademark for services in finance and banking. The necessary distinctive character exists since the phrase is indeed an expression of the English vocabulary, concerning the services it is not purely descriptive but rather in need of interpretation.

Judgement of the Court of Justice of the European Union of 19/05/2010, file number: T-163/08

According to the European Court, the word mark "Golden Toast" cannot be registered as a community trademark. The registration is contrary to the purely descriptive quality of the term. In Germany might be "Golden Toast" understood as operating origin. In English, however, the term would refer to a product “suitable for toasting” and golden coloured. The refusal in one part of the community denies the trademark registration in general.

Judgement of OLG Hamburg (Higher Regional Court Hamburg) of 12/05/2010, file number: 3 U 58/08

The name “Stimmt´s”, for the heading of a quality weekly newspaper, is protected. This happens since the colloquial form of the question has a minimum level of originality and a distinctive character for the consumer. The operator of a commercial Internet portal is therefore not allowed to use the name “Stimmt´s” for the knowledge rubric of his website, which is concerned with similar matters. 

Judgement of BPatG (Decision of the Federal Patent Court) of 02/06/2010, file number: 28 W (pat) 34/10

The trademark "Masterpiece" cannot be protected as a trademark for furniture, especially for waterbeds, since it does not represent a mark of origin of a particular company. The target audiences understand the term as excellent, something of technical or sporting nature, something which can be related with a masterful execution, or a masterful design. The name describes the quality of goods, and therefore it cannot be registered as a descriptive mark – not even taking into account the graphic design.

Decision of the Court of Justice of the European Union of 08/07/2010, file number: T-30/09

The Court of Justice of the European Union affirmed the likelihood of confusion between the word marks “peerstorm” and “PETER STORM”, both registered for clothing articles. Both trademarks have a visual, phonetic and conceptual similarity. Although the use of signs, made up of first and last name, is usual in the clothing sector, a likelihood of confusion exists if both trademarks are used for the same product line.

The Ravensburger publishing was subject to two procedures against its Spanish competitor Educa Borras S.A. The court of the European Union in Luxemburg delivered the judgement that the word “Memory” has a purely describing nature and therefore it is not capable of being registered as a trademark.  Hence, the community trademark applied by Ravensburger was deleted on request of the Spanish games and puzzles manufacturer. For several years now, the term “Memory” is protected in Germany and Austria for games. In a further judgement, the court consequently approved the application of the figurative mark “Educa Memory game”. There is no danger of confusion with the Ravensburger games. The...

Press Release of BGH (Federal Supreme Court) nr. 09/2009 about the judgement of 14/01/2010, file number: I ZR 88/08

Opel has tried to prohibit the use of the protected lightening on model cars. The Federal Supreme Court denied the rights which are usually conceded within the scope of trademark protection. On the one hand, there is no danger of confusion between the model cars and the real vehicle; on the other, the consumer perceivers the model car as a reproduction of the brand in the shape of a toy and not as an indication of origin or company labelling.

Press Release of BGH (Federal Supreme Court) nr. 10/2009 about the judgement of 14/01/2010, file number: I ZR 82/08

Third parties are allowed to imprint on clothing symbols and writings of former Eastern Bloc as for example “CCCP” (USSR) including hammer and sickle, though these signs are protected as trademark for clothing. However, the imprint of the signs does not represent any Trademark infringement since it does not offend any trademark rights of the trademark holder. The imprints are not realised as origin of the products or as company labelling or branding; but just as decorative element.

Judgement of EuG (ECJ) of 15/12/2009, file number: T-476/08

The applied community trademark “Best Buy” lacks of distinctiveness, hence, it cannot be registered as Trademark. The evaluation of the applied complex Trademark is based on the complete perception of the sign. The average consumer understands, through that words combination, an obviously favourable relation between price and market value of the product. Besides, in the eyes of the relevant public it is only an advertising formula or a slogan. 

Decision of the BPatG (Federal Patent Court) of 29/10/2009, file number: 25 W (pat) 72/09

The Federal Patent Court has decided that the word mark “WEIHNACHTS-ZAUBER” (“CHRISTMAS MAGIC”), which describes the special charisma and atmosphere of Christmas markets, cannot be registered due to the lack of distinctiveness. The word “WEIHNACHTS” (“CHRISTMAS”) shows a narrow relation to chocolate goods with typical Christmas taste. According to the Federal Patent Court, the connection to the word “ZAUBER” (“MAGIC”) is just a marketing recommendation and it does not create a new word.

Judgement of the European Court of First Instance of 17/11/2009, file number: T-473/08

Due to the word combination, the trademark THINKING AHEAD lacks of distinctiveness for the general public in the classification of sporting and educational activities. The combination of the words “thinking ahead” has a clear meaning regarding education services; therefore it does not justify any trademark registration.

Decision of BPatG (Federal Patent Court) of 15/09/2009, file number: 33 W (pat) 21/08

A mark which contains several purely describing parts is not capable of being protected even if these are atypically arranged or if they form new word creations, provided that they lack of distinctiveness. Technical terms which appear generally describing do not have this distinctiveness either. A former registration of a mark not capable of registration does not allow a claim for registration since no discretion is possible and is applied to the bare legal situation of the moment.

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”.

Judgement of LG Frankfurt (Regional Court Frankfurt) of 12/08/2009, file number: 2-06 S 10/09

When a warned, for example of an offence against copyright, does not pay the warning costs of the opposing lawyers, these will normally demand the payment judicially. If the court finds the defendant guilty of such an offence, this must bear the claimed debit note.