Recently the German Federal Patent Court (Bundespatentgericht) issued a special invitation to the President of the German Patent and Trade Mark Office (GPTO), Mrs Rudloff-Schäffer, by means of this decision of 15 September 2010 to join pending appeal proceedings 25 W (pat) 8/09 concerning the proceedings to revoke the protection granted in Germany with respect to 3-dimensional trade mark IR 869 586.

According to §68 Abs. 2 MarkenG (the German trade mark law), the Court may issue such an invitation if the decision concerns questions of general relevance. Apparently the court is of the opinion that this is the case in the present proceedings since the decision may have a general influence of the proceedings before the GPTO.

The facts of the case so far are as follows: a third party filed a request for revocation of protection for the German part of international registration IR 869 586 (which had been granted with respect to “Cacao, chocolat, produits de chocolaterie” in Class 30) based on the argument that the trade mark had been granted protection despite an alleged lack of distinctiveness and descriptive character (§ 8 (1) 1. and 2. MarkenG). The GPTO rejected that request in the first instance since, allegedly, the contested 3-dimensional trade mark differs strongly from the usual product forms in the area of chocolate products and thus may function as an indication of the origin of goods.

In the appeal proceedings, however, the Bundespatentgericht tackled the case from a completely different angle and raised the question whether the 3-dimensional trade mark is sufficiently and unambiguously defined and thus fulfils the requirements of graphic representation according to § 8 (1) MarkenG since only a single side view had been filed. The argument of the trade mark owner, according to which the requirement of § 8 (1) MarkenG only is to be examined during the registration procedure but may not be the basis for a revocation of protection according to § 50 MarkenG, is not shared by the court. So the questions which will now have to be decided (with the participation of Mrs Rudloff-Schäffer, if she chooses to accept the invitation) are (i) Is the image shown above sufficient to define the scope of protection of the claimed 3-dimensional mark as it allegedly lacks any three-dimensionality? (ii) Is it in general possible to claim a three dimensional mark by filing only one side view of a three dimensional object or does one only gain a “partial protection” for the side view in this case? (iii) Is the unambiguous definition of a sign part of the “ordre public” according to Art 6. quinquies of the Paris Convention and may thus by a basis for a revocation of protection?

Most likely, the decision of the Federal German Patent Court on these questions will not be the end of the story as the court already indicated that so far no jurisdiction by the Federal Court of Justice (Bundesgerichtshof) exists with respect to these points.

This post was prepared for publication on Class 46 by Robert Börner (Hansmann & Vogeser, Munich).