TUESDAY, 29 MARCH 2011
Germany: any "Trademarker" may breathe a sigh of relief
According to a recent decision of the German Federal Patent Court (Bundespatentgericht) the sign "Trademarker" is not registrable for the goods
(according to current classification Class 45):
due to a lack of distinctiveness.
The applicant filed the trade mark "Trademarker" back in 2006. The first instance of the German Patent and Trademark Office (GPTO) rejected the application due to a lack of disctinctiveness, since the relevant public would perceive the sign "Trademarker" merely as an indication that the respective goods/services refer to trade mark matters. According to the GPTO the term "Trademarker" is a personification of the english term "trademark", which, although not being present in a dictionary (yet), will be understood by the German public. This opinion was upheld by the GPTO in the next instance as well, so that the respective complaint ("Erinnerung") was rejected.
In the appeal proceedings the applicant tried to argue that
- the alleged personification does not correspond to common linguistic use of the German language and
- the correct English term for a person dealing with trademarks is not "trademarker" but "trademark attorney".
Thus according to the applicant the relevant German public will not see the connection between the term "Trademarker" and the claimed goods/services. Additionally reference was made to an US registration "Trademarkers" which was taken as an indication for allowability of the term "Trademarker" in Germany.
The Court, however, did not follow these arguments. In his opinion the English term "trademark" is commonly used in the German language, as can be seen from various dictionaries. The term "Trademarker" has a very close relation to the term "trademark" as such. Therefore the public will understand the term as an allusion to trademarks and thus the term is regarded as being descriptive for the claimed goods/services.
So this Class 46 member may still refer to himself as being a "trademarker" although to be honest he never even thought about it until he read this decision :-)
Case reference: Bundespatentgericht 24 W (pat) 33/10 of February 1, 2011. The decision can be retrieved from the court’s website by following the above link.
PS: interestingly OHIM allowed the registration of the sign
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