Deutsche Bahn’s mark cancelled for being descriptive
The Federal Patent Court has confirmed a decision of the German Patent and Trademark Office in large parts, stating that the mark S-BAHN was descriptive for a wide range of goods and services in Classes 16, 25, 28 and 39 of the Nice Classification (Case 26 W (pat) 21/11, March 14 2012 ).
Deutsche Bahn AG was the owner of the German word mark S-BAHN (Registration 399 080 40), registered in 2002 for a vast range of goods and services in Classes 16, 25, 28 and 39, including stationary, printed matter, clothing, games and transportation. In respect of certain goods and services, the list had been restricted at the trademark owner’s request.
A group of German communities filed a request for the cancellation of the mark with regard to the remaining goods and services, arguing that the mark:
- was not distinctive;
- was descriptive at the time of registration – or, at least, had since become descriptive; and
- was misleading in respect of certain goods or services.
Deutsche Bahn argued that the S-BAHN mark was distinctive and not descriptive or misleading. In the alternative, Deutsche Bahn argued that S-BAHN had acquired distinctiveness (secondary meaning) through use; it presented various documents demonstrating extensive use, together with two market surveys (one conducted in 2001, the other in 2009).
The 2001 market survey demonstrated that 91% of all interviewees were familiar with the designation ‘S-Bahn’, but only 43% believed that the term referred to a specific company. According to the 2009 market survey, 57.3% of consumers using public transport, 51.9% of consumers potentially using public transport and 48% of all interviewees associated S-BAHN with Deutsche Bahn (the figures did not deduct the margin of error).
The Patent and Trademark Office cancelled the trademark in respect of all goods and services. In contrast, the Federal Patent Court found that, in respect of “paper or cardboard, teaching material (except apparatus) in terms of globes and plotters for wall charts” in Class 16 and “tennis rackets, skaters and ice skaters” in Class 28, none of the aforementioned reasons for cancellation were present.
However, in respect of all the other goods and services, the S-BAHN mark was found to be descriptive, regardless of its positioning on the product, packaging or label. This was clear from the extensive descriptive use of the term in, among other things, dictionaries and legislation. The material provided by Deutsche Bahn did not prove that the mark had acquired distinctiveness through use. In addition, the results of the market surveys did not convince the court that S-BAHN would be perceived as an indication of origin: because S-BAHN was clearly descriptive, a clear majority of all interviewees needed to confirm that they perceived S-BAHN “as a trademark” - that is, as a sign indicating the origin of the goods/services concerned.
In the present case - in particular, when deducting the general margin of error of 3.3% - the figures fell short of the minimum threshold of 50% in the relevant fields of trade. Interestingly, the Federal Patent Court found that the relevant fields of trade included all consumers - that is, not only consumers (potentially) using public transport, because “all consumers” were deemed to be confronted with the designation ‘S-Bahn’ within the context of discussions regarding public transport in the fields of politics, business and media.
As the court found that S-BAHN should be cancelled for being descriptive, it did not have to decide whether any other grounds for cancellation were also applicable.
Companies active in the field of public transportation will welcome this decision, because it now seems unlikely that they could be successfully sued by Deutsche Bahn for using the sign ‘S-Bahn’ in connection with transport. Deutsche Bahn had filed the corresponding Community trademark application in 2008, but withdrew it during the examination proceedings. It is unknown whether OHIM raised doubts as to the registrability of the sign.
The decision is of particular interest in that it concerns the trademark of a state-owned company within a former state monopoly, namely public transport. However, due to the results of the market surveys, the court decided not to examine the impact of such monopoly, which would have been interesting in light of earlier decisions of the Federal Patent Court and the Federal Supreme Court regarding the word mark POST, owned by Deutsche Post AG.
Philipe Kutschke, Bardehle Pagenberg, Munich
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