The German Federal Court of Justice (BGH) recently had to decide on the registrability of the trade mark "Kaleido" for goods covering, inter alia, toys and toy kaleidoscopes (in German: das Kaleidoskop (neutral)).

The Federal Patent Court had agreed with the DPMA’s Examiner’s refusal and rejected the registration of the sign as a trade mark due to lack of distinctiveness arguing that consumers would understand the sign as a mere abbreviation of kaleidoscopes.   In its decision, the Federal Patent Court referred to linguistic theories, including the association theory.

The BGH disagreed (case reference: I ZB 72/11 of 22 November 2012) and took the view that the average and reasonably well-informed, observant and circumspect (German) consumer will not always interpret the term “Kaleido” as an abbreviated description of the good “kaleidoscope”.  The term "Kaleido" could refer to other products with the same suffix and therefore had to be considered as “fanciful” for the goods covered.  In particular – and this appears to be the crucial point of the decision - the judges found that there was no evidence that the term “Kaleido” was in common usage in Germany.  The court held that abstract linguistic insights, which are based on the assumption of an “associative supplementation” of a term that is perceived as an abbreviation within a given context, may not be relied upon when assessing the legal question of distinctive character.  Instead, the question of distinctiveness had to be determined by considering the special circumstances and use of language within the relevant field of industry.

The decision can be found here (full text, PDF, German).