Federal Supreme Court considers requirements for cancellation of mark on absolute grounds


Smartbook AG is the owner of the German word mark SMARTBOOK (No 305 05 515), filed on February 1 2005 and registered on May 31 2005, which covers a large range of goods in Classes 7, 9 and 14 of the Nice Classification, including computers, notebooks and laptops. A request for cancellation on the grounds of descriptiveness and lack of distinctive character, filed in 2009, was accepted by the German Patent and Trademark Office. However, upon Smartbook’s appeal, the Federal Patent Court reversed and dismissed the petition for cancellation. A further appeal brought by the petitioner has now been rejected by the Federal Supreme Court (Case I ZB 59/12).

The Federal Patent Court had emphasised that the cancellation of a mark on absolute grounds after a mark has been registered is subject to strict conditions. In addition, the absolute grounds under Section 8(2) No 1 to 3 of the German Trademarks Act are based on the specific interests of competitors.

As regards the inherent distinctiveness of the mark SMARTBOOK, the Federal Patent Court had ruled that:

  • the mark had no direct meaning in relation to the goods in question at the time of registration; and
  • there was no foreseeable descriptive use of the composite mark SMARTBOOK.

The Federal Supreme Court essentially agreed with the lower court, but added some clarifications. According to the Federal Supreme Court, the existence of absolute grounds must be established at the time of application (in the present case, the period between the filing date and the registration date was not material). Any remaining doubts must be resolved in favour of the trademark proprietor. Descriptive use of the mark after the filing date or the registration date does not prove that the mark was descriptive at the time of application. Moreover, any subsequent descriptive use of the SMARTBOOK mark had actually been made by the petitioner for cancellation.

The judgment is significant because it emphasises that post-filing descriptive use is not relevant for determining the descriptiveness of a mark at the time of application. In addition, the decision shows that, where doubts remain, these must be resolved in favour of the trademark owner.

Karolin Ernst, Bardehle Pagenberg

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