Federal Supreme Court considers standards of distinctiveness and descriptiveness

The German Federal Supreme Court has confirmed (Case I ZB 3/13) a decision of the German Federal Patent Court of October 9 2012 in which the latter had invalidated the German part of the international trademark HOT (International Registration No 797277).

The court’s official headnote reads as follows:

“When a trademark (here: HOT) has several meanings (here: aside from ‘warm’, also ‘spicy, hotly spiced, piquant’ in relation to taste and, figuratively, ‘sexy, trendy, great’), all of which are descriptive of the registered goods (here: among other things, cleaning preparations, body care preparations, food supplements, printed matter and clothing), the interpretative effort resulting from the different possibilities of understanding the term does not, as such, suffice to give it distinctive character.”

The international trademark HOT, depicted below, was registered for “bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, massage oils, gels, face creams; hygienic products for medicine; nutritional supplements (adapted for medical use); lubricants for pharmaceutical purposes; paper, cardboard and goods made thereof, not included in other classes, printed matter, including calendars, labels for goods, photographs; clothing and footwear” in Classes 3, 5, 16 and 25 of the Nice Classification:

The validity of the registration was challenged by Australian Gold Inc on the ground that the mark lacked distinctiveness for all the goods at issue.

On March 22 2011 the German Patent and Trademark Office issued a decision invalidating the contested mark for “bleaching preparations and other substances for laundry use; soaps; perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, massage oils, gels, face creams; nutritional supplements (adapted for medical use); lubricants for pharmaceutical purposes; printed matter, including calendars, labels for goods, photographs, clothing and footwear” for lack of distinctiveness, but maintained the registration for “cleaning, polishing, scouring and abrasive preparations; hygienic products for medicine; paper, cardboard and goods made thereof, not included in other classes”. Both parties appealed.

The Federal Patent Court affirmed and, upon Australian Gold’s cross-appeal, invalidated the mark for all goods.

The case is interesting because the trademark proprietor had previously obtained preliminary injunctions from the German courts, which had found that the mark was sufficiently distinctive and refused to suspend the proceedings to await the outcome of the cancellation actions. The proprietor’s challenge to the Federal Patent Court’s decision to disregard these previous decisions was dismissed. According to the Supreme Court, the Federal Patent Court had correctly found that the civil courts in the infringement proceedings had not actually reviewed the registrability of the trademark, as a registered mark is presumed to be valid. Under German law, in infringement cases, an attack on the validity of allegedly infringed marks on the grounds of descriptiveness or absence of distinctiveness is not allowed; such a challenge must be brought before the Patent and Trademark Office - as was done in the present case, which led to a confirmation of the cancellation by the Supreme Court.

Protection for the same mark was also refused by the Australian, UK and Japanese trademark offices. A case concerning the extension of protection of the mark to the European Union is currently pending before the General Court of the European Union.

Henning Hartwig, Bardehle Pagenberg, Munich

Bardehle Pagenberg represented Australian Gold Inc in this case