The German Federal Patent Court (BPatG) has decided on the registrability of the sign "i.demo". The judges held that the term could be registered for lenses as well as software to be used in connection with eyecare in class 9. The decision forms part of the conflicting case law on so called "i"-marks. This term refers to signs containing the character "i", in lower or upper case letters, alongside words which are, depending on each case, more or less descriptive of the goods and services the sign is used for.

The German Patent and Trade Mark Office (DPMA) had refused to register the mark "i.demo". It claimed the sign was devoid of any distinctive character, contrary to sec. 8(2) No. 1 of the German Trade Mark Act. According to the DPMA, the sign consisted of the letter "i", a supposedly common abbreviation for "internet", combined with a full stop and the term "demo", which would be understood as the shortened form of the word "demonstration". The office concluded that the relevant public, especially those in the IT sector, could expect a service that presents sample glass lenses online, thereby enabling its customers to select a fitting design.

In its appeal, the applicant argued that the sign "i.demo" was, due to various possible meanings of the letter "i", ambiguous and open to interpretation. In particular, customers perceived the letter "i" in word marks as an indication of origin. As an example, the appellant referred to the well-known product names "iPhone", "iPod" and "iTunes". In this context, the prefix "i" served as a consistent element to draw the different marks together. The same concept would apply to the applicant’s trade mark portfolio including the marks "iProfiler", "i.Polatest" and "i.Terminal".

The BPatG agreed with this position. The character "i" did not have a pure descriptive meaning, but could be interpreted in different ways, the word "internet" representing only one of them. The judges stressed that the established German dictionaries for abbreviations and acronyms did not contain a corresponding entry under the letter "i". Moreover, the goods referred to in the application were not specifically aimed at the IT sector. Accordingly, it appeared less likely that consumers would associate the letter "i" with the word "internet". The fact that lenses could be bought on the internet was deemed to be irrelevant, since almost all products can be bought online.

In view of the connection with eyecare products, it is noteworthy that the court did not elaborate on the question of whether the relevant public, when confronted with the sign "i.demo" for lenses, would perceive the letter "i" as denoting "eye". It is arguable that even the average German consumer has a sufficient knowledge of the English language to establish this relatively obvious link.

Further, the decision might come as a surprise to followers of Class 46 who recall the ruling the BPatG gave on the registrability of the term "iNanny" (already reported here). In this instance, the court had upheld the decision of the DPMA to decline registration for the aforementioned sign on the basis of a lack of distinctive character for goods and services in classes 9, 38 and 45. The case illustrates how both judges and registrars have repeatedly established that consumers are allegedly likely to understand the letter "i" as an abbreviation for the term "internet". This view was shared by OHIM concerning the sign "IMESSAGE" as well as the UK IPO with regard to "iCasino.com".

Although the BPatG has come to a different conclusion in this instance, it is unlikely that the court has changed its general approach to registering signs containing the prefixed letter "i". The judges emphasised that whether or not the letter "i" is to be understood as a purely descriptive reference to the term "internet" should be decided on a case by case basis. The court referred to several of its previous decisions in which it had granted protection, for instance, by allowing to register the term "IPAY" for classes 35, 38 and 42.

The court’s latter statement is to be welcomed. In principle, it ensures individual fairness in each particular case. However, signs containing the letter "i" have become quite popular in commerce and there is, consequently, a growing need for the courts to formulate comprehensive guidelines concerning the registrability of "i"-marks. The sheer volume of litigation dealing with the issue at hand proves that such an intervention by the courts would not only minimise unnecessary risks for trade mark applicants, but could also assist in reducing the workload of registrars and judges.

In this context, the UK IPO’s attempt to provide a corresponding outline should be mentioned (see p. 26 here). Regrettably, the document remains too general for it to serve as a reliable guidance or to be of greater value for practitioners.

This article has been prepared and written for Class 46 by Christian Tenkhoff