Trademark Registration

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 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 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.

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...

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.

Judgement of EuG (European Court of First Instance) of 30/09/2009, file number: T-75 / 08

Due to the claim of the enterprise JOOP!, the European Court of First Instance has decided that an exclamation sign cannot be registered as a community trademark. The company requested the registration of two community trademarks by the Office for Harmonization in the Internal Market (OHIM). The OHIM rejected the registration because of the lack of distinctiveness. For the consumer it is just an exclamation sign which is not written in an unusual way, it is only promoting and an eye-catcher.

Decision of BPatG (Federal Patent Court) of 06/05/2009, file number: 29 W (pat) 96/07

The word-figurative mark “Double click” has no distinctiveness. The concept is a lexically provable specialist term, familiar in wide national business circles. The name is a describing statement, the concerning goods can be requested by double click, are offered in electronic form and can be accessible in that manner.

Decision of BPatG (Federal Patent Court) of 14/07/2009, file number: 33 W (pat) 121/07

The sentence “Nobody brings more people in the own 4 walls – Schwäbisch Hall” can be registered as a word mark. The first part of the slogan indicates that the building society describes itself as market leader. To find characteristic descriptions in the sentence, speculations and logical steps are needed. A description of the service fails within the slogan. The statement Schwäbisch Hall advises to a certain supplier and should not be understood as geographical information.

Judgement of EuG (Court of First Instance) of 30/06/2009, file number: T-435 / 05

The issue is whether the signs in question, which correspond to the title of a film, were used as trade marks prior to the date of application for registration of the Community trade mark, which has not been shown by the applicant. If the signs are use as a reference which is descriptive of the goods and some of the goods are also provided with other origin specification, this indicates the commercial origin of the same serie. If the sign, which is the action figure of characters from the film, is only used as a connection of a product with the film, this is only describing.

Decisions of BGH (Federal Supreme Court) of 16/07/2009, file number: I ZB 53/07 and I ZB 55/07

The Federal Court of Justice has decided that Lego bricks may not be registered as a three-dimensional mark. On the squared shape cannot be based, because it concerns the basic shape of the product type and this cannot be protected. Also the knobs on the top of the brick cannot be trademark protected since their form serves merely the reaching of the technical effect (fitting together).

Press release of EuG (Court of First Instance) No. 60/09 about the judgement of 08/07/2009, file number: T-28 / 08

According to the Community Trade Mark Regulation, a trade mark which has no distinctiveness may not as a general rule be registered. However, such trade mark may be registered if it has acquired, in respect of the goods or services for which registration is sought, distinctive character following the use made of it. Nevertheless, the European judges in the First Instance denied in a current judgement this distinctiveness of the Bounty bar, necessary for the registration.

Decision of BPatG (Federal Patent Court) of 28/05/2009, file number: 25 W (pat) 70/08

The federal patent court had to decide whether the brand "Passion play" has, in the area of layout creations of web sites, enough distinctiveness for the, not only on the regional level but, worldwide known passion play which presents the popular dramatic representation of the life and death of Christ. The judges denied this because of the absent material relation of layout creations of the, in general widespread, image of the passion play. They were against a registration of the brand.