Log in


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

Want to receive Class 46 by email?
Click here subscribe for free.

Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
German Federal Patent Court: "Schwarze Eulen" (black owls)

After the General Court's recent bunny shape mark decisions, another decision concerning "animal" trade marks, this time from the German Federal Patent Court concerning a word mark - and decided before the Lindt bunny cases.

In a court order of 29 November 2010, the German Federal Patent Court decided that the word mark "Schwarze Eulen" (in English: black owls) was not registrable for class 30 goods (including candy, fruit jelly (sweets), fruit gum, chewing gum (not for medical use), confectionary, liquorice, chocolate, wine gum and sweets in the form of Christmas decorations).   

The court held that the sign "Schwarze Eulen" consisted exclusively of a description of the characteristics of the goods covered by the application, in particular their shape and colour. The court further took the view that animal shapes were customary and commonly used shapes for sweets. 


Consequently, the judges decided that consumers, and in particular end-consumers, would first and foremost understand the sign "Schwarze Eulen" as a reference to the shape of the goods offered, which was akin to other common shapes used for sweets.  This interpretation seemed even more likely since the shape of owls was already in use for snacks and also used for children's toys, for example in connection with the well-known "Harry Potter" series.


In light of this, the court found that consumers when faced with the sign "Schwarze Eulen" would be able to determine the shape and colour of the (confectionary) goods covered without any further ado and without an in-depth analysis und hence interpret the sign as a direct description of the characteristic of the goods, which needed to be kept free. Thus, consumers would not regard the sign as an indication of trade origin.  As such, the sign "Schwarze Eulen" fell foul of the absolute ground of refusal under Article 8(2) No. 2 German Trade Marks Act (descriptiveness).



German Federal Patent Court, court order of 29 November 2010 "Schwarze Eulen", case reference: 25 W (pat) 195/09. The decision can be retrieved from the court's website by clicking here.
Posted by: Birgit Clark @ 12.51
Tags: Bundespatentgericht, animal trade marks,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA2191
Reader Comments: 8
Post a Comment

Submitted By: Tove Graulund
04 January 2011 @ 13.27
I am sorry - but what nonsense. Then I suppose that BILAR is merely descriptive in Sweden for candy cars as well !?! http://en.wikipedia.org/wiki/Ahlgrens http://www.ahlgrensbilar.com/ What a strange way to punish a creative manufacturer.
Submitted By: Birgit Clark
04 January 2011 @ 13.50
Well, I can see where the court is coming from, given there are the owl snack "nibbles" that are on the market and all kind of other "animals". Is this is not vaguely in line with the GC in the Lindty bunny cases, albeit that these were obviously concerned with shape animal marks.... ? Anyone?
Submitted By: Jeremy Phillips
04 January 2011 @ 14.05
Tove: yes, the manufacturer has been creative -- but the question is whether it has created a product or a brand. Arguably Katjes is the brand and Schwarze Eulen is the product name. Unless the German public is educated to respond to Schwarze Eulen as an indication of origin, I don't think it is.
Submitted By: Birgit Clark
04 January 2011 @ 14.16
Tove, of course, I can see "Schwarze Eulen" working as a product name and also as a trade mark but somehow not for sweets and the argument regarding Harry Potter appears surprisingly up to date. The court also used one of my favourite German trade mark terms/concepts ("needs to be kept free" = freihaltebeduerfitg). I would react exactly as the court has argued but then again, I am not sure that I qualify as a German consumer these days.
Submitted By: Frédéric Glaize
04 January 2011 @ 14.18
It seems to me that the verbal mark is distinctive and should not have been rejected because it describes an (arbitrary) shape. Unless the candies do actually contain owl (and preferably of the black species), I guess the mark is valid. Jeremy, I do not get your point: for me the mark is valid ab initio here. Why would the public need to be educated? And can't a product bear two brands?
Submitted By: Frédéric Glaize
04 January 2011 @ 14.24
Just to substantiate my previous comment: the decision surprises me in so far as I understand that there are two different and independent points: 1) the mark describes the shape of the goods (this is in my opinion not sufficient to reject the application in this case) 2) moreover candies shapes as owl are commonly sold by different makers. But should point 2 be a only step in the decision process, then my previous comment does not hold.
Submitted By: Jeremy Phillips
04 January 2011 @ 14.38
Frederic: the fact that these confections do not actually contain the flesh of the black owl does not in my opinion save them from descriptiveness. Article 7(1)(c) refers, after all, not only to designation of the goods but to the designation of their qualities. One quality of an owl is that it tastes of owl; its DNA is owl DNA etc. Another is that it bears a physical appearance which, by virtue of its shape, enables the relevant consumer to identify it as an owl without killing it and sending samples away for forensic testing (tasting?). If it is black and possesses the characteristic shape of an owl, then every sentient German will believe that a packet of "Schwarze Eulen" will contain a specific type of product, not a product from a single source, unless he his educated to the contrary. You are of course correct to state that a product can carry more than one brand. I would never argue with that proposition. Where I disagree is that I think that this product only carries one brand. If "Schwarze Eulen" and Katjes are both brands, the poor little product has no product descriptor ... Happy New Year!
Submitted By: Tove Graulund
05 January 2011 @ 13.25
I am glad that we have a dialogue going, and I know that I do tend to get a bit emotional about things like this - or perhaps it is passion ;-) So to understand Jeremy's point, if the manufacturer had put white candy shaped like elephants in the bad instead, would the mark no longer be descriptive? I don't think that is was in the first place, but for the sake of the discussion. The trademark BLACK OWL for a black car shaped like an owl (interesting thought!) would then not qualify either?...

MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

The Class 46 Archive








+44 (0)116 2747355

9 Cartwright Court, Cartwright Way
Bardon, Leicestershire
LE67 1UE


Ingrid de Groot
Internal Relations Officer
Alessandra Romeo
External Relations Officer
James Nurton
Newsletter Editor
Robert Harrison

Signup for our blogs.
Headlines delivered to your inbox