On appeal from the German Patent and Trade Mark Office, the German Federal Patent Court (Bundespatentgericht) recently had to decide in invalidity proceedings concerning the word mark “MAR Y SOL” covering “hospitality services” and we learn from this court order that the average German consumer not only understands basic English language words but also has a smattering of Spanish.

In its court order of 12 October 2010, the court started its assessment by stating that the Spanish language word combination “MAR Y SOL” translated into the German words “Meer” and “Sonne“ (in English: sea and sun).  The court found that these words were part of basic Spanish vocabulary and were thus also known to those that do not understand the Spanish language as such, but nonetheless have once  spent their holidays in Spain - like so many Germans have.  However, when assessed in relation to the services covered by the mark (hospitality/food catering services), “MAR Y SOL” neither described the services itself, nor the food or drinks offered.  The sign merely conveyed a subliminal reference that the hospitality services offered under the mark “MAR Y SOL” were influenced by Spanish cooking, perhaps also that the restaurant premises had a Spanish-Mediterranean ambience.  However, the court held that this did not even come close to falling foul of the descriptiveness objection under Article 8 (2) No. 2 German Trade Mark Act.

The court further found that the sign “MAR Y SOL” was also distinctive enough to qualify for trade mark registration under Article 8 (2) No. 1 German Trade Mark Act.  While a distinctiveness objection could have applied if there had (already) been numerous restaurants offering the services under the same mark “MAR Y SOL”, the court found this was not the case here and that "MAR Y SOL" was not a common name for restraurant: consequently, the mark was validly registered.

Case reference:  24 W (pat) 2/10 of 12 October 2010.  The court order can be retrieved from the court’s website by clicking here (PDF)