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No protection of the mark 'HOT' in Germany
The German Federal Supreme Court (BGH) has recently ruled on the protectability of the figurative sign 'HOT'. Acknowledging the importance of this case, the BGH issued the following guiding principle (loosely translated into English by this member of Class 46):
If a word (here: 'HOT') has various meanings (here: 'heated' as well as 'spicy or piquant' regarding taste and in a figurative sense 'sexy, terrific or great'), which are all descriptive in relation to the goods for which it is registered (here: goods including cleaning preparations, cosmetics, food supplements, printing products and clothing), the measure of interpretation that is required on the part of the relevant public merely due to these different meanings is not enough to confer distinctiveness on that word.
Initially, the trade mark proprietor had successfully extended the protection for the international registration of the mark at issue to Germany. The figurative mark, which consisted principally of the word 'hot' written in capital letters within a rectangular box, was registered in Classes 3, 5, 16 and 25 for the goods mentioned above, amongst other things. However, the German Federal Patent Court (BPatG) subsequently withdrew the protection for the German part of the registration finding that the sign was devoid of any distinctive character, contrary to Section 8(2) No. 1 of the German Trade Mark Act. The Court held that the average German consumer is able to understand both the literal and the figurative meaning of the word 'hot', which is part of the standard English vocabulary. Therefore, the average consumer would be likely to perceive the term as being purely descriptive of the goods covered by the mark or as a general promotional description.
The BGH has now followed this reasoning and dismissed the trade mark owner's appeal. The average consumer would understand 'hot' either as describing the appropriate temperature for the use of the relevant goods (in the case of cleaning products) or as denoting that the products were generally attractive (in the case of the remaining goods). According to the judges, a word may be purely descriptive, even if it is vague or does not "exhaustively" characterise the goods for which it is registered. The Court did not deem the word 'hot' to evoke sufficient ambiguity to grant it protection. In addition, the relevant public would be likely to understand 'hot' - a term frequently used in advertising - as a mere promotional statement. The graphical elements of the mark were not significant enough as to justify a different conclusion.
The BGH's decision should be viewed in conjunction with 'Vorsprung durch Technik' (see case C-398/08 P, reported here). In this case, the CJEU established that marks that are not purely descriptive can express an objective message and still serve to indicate the commercial origin of goods or services, if those marks require at least some interpretation by the relevant public. It could be argued that the English term 'hot' fulfilled these criteria, since the average German consumer had to consider and interpret the various meanings of the term. However, the BGH has now clarified that the effort, which is required merely to interpret different literal and figurative meanings of a single word, is not sufficient for the word to be held distinctive.
It is, at best, difficult to reconcile this result with case T-67/07, in which the General Court granted protection for the word mark 'FUN' claiming that the link between the word 'fun' and the goods applied for (here: land motor vehicles) was too vague, uncertain and subjective to confer descriptive character on that word.
Moreover, the BGH's decision is significant, since the trade mark owner successfully registered the mark 'HOT' in the United States and as a CTM. The judges noted that these previous registrations did not have a binding effect on the Court. This statement falls in line with the General Court's view that neither the OHIM nor the EU Courts are bound by decisions adopted in any Member State, or a third country, finding a sign to be registrable as a national trade mark. The General Court has recently reaffirmed this position in case T-291/12 (reported here and here).
Reference: BGH, decision of 19 February 2014, in case I ZB 3/13.
Posted by: Christian Tenkhoff @ 15.03Tags: Bundesgerichtshof, BGH, HOT, distinctiveness, interpretation, I ZB 3/13,



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