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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.

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Anthonia Ghalamkarizadeh
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With a little bit of imagination...
A series of recent decisions of the Federal German Patent Court (Bundespatentgericht) proves once more that with a little bit of imagination it is sometimes possible to overcome relative objections due to e.g. lack of distinctiveness.

The applicant had filed the following five design trade marks, each for the goods "footwear" in class 25.

The German Patent and Trade Mark Office had originally rejected the applications in the first instance due to an alleged lack of distinctiveness as the signs only consist of ornamental designs being commonly used in the relevant sector. Thus the public would not take the sign as an indication of origin but merely as an representation of the design of the relevant shoe.

The Court, however, did not share this opinion. Especially in the field of footware it was deemed to be common to use graphical elements as indications of origin. Since the trade marks had not been filed as position trade marks it further has to be admitted that they may be used not only on the outer side of shoes but everywhere. Thus a distinctiveness may be present even if the respective signs consists of a rather simple geometric form. So far so good.

But then, however, the Court takes up the argumentation of the applicant (which according to the opinion of this Class 46 member is quite surprising and really shows a certain degree of imagination) according to which the above signs are far from being merely a simple graphical element. On the contrary, the signs are supposed have a specific meaning, i.e. the letters "IX" (or the roman number 9), the letter "V" or "U" (or the roman number 5), the letters "IXI" (or a combination of roman numbers 1, 10 and 1), the letter "X" (or the roman number 10) and the letter "N".

As a result the Court then simply refers to jurisdiction according to which a trade mark consisting of a single letter may be disctinctive and comes to the conclusion that the trade marks are thus registerable...

Case references: Bundespatentgericht 27 W (pat) 279/09, 27 W (pat) 280/09, 27 W (pat) 281/09, 27 W (pat) 282/09, 27 W (pat) 283/09, all of February 1, 2011. The decisions can be retrieved from the court’s website by following the above links

Posted by: Robert Börner @ 15.30
Tags: German Federal Patent Court , Distinctiveness, ornament,
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