Name of famous writer not registrable as trademark for writing instruments

The German Federal Patent Court has ordered the cancellation of the word mark MARK TWAIN for writing instruments (Case 29 W [pat] 75/12). The court held that, if the public perceives a mark as a dedication to a famous personality, then it does not function as an indication of origin. Moreover, the court held that the examination of distinctiveness can be limited to the manner of use that is deemed to be the most likely.

Since 1992 Montblanc, a manufacturer of high-quality writing instruments and other lifestyle products, has launched annually a writing instrument set under the name “Limited Writers Edition”. The products of this series are intended to honour the life and work of great literary personalities. In August 2010 Montblanc brought on the market writing instruments bearing the inscription “Mark Twain”. This resulted in a conflict with a producer of promotional items, who is the owner of:

• the Community trademark MARK TWAIN for “writing instruments” in Class 16 of the Nice Classification; and
• the German trademark MARK TWAIN, registered in November 2010 for the same goods.

Montblanc requested the cancellation of the German mark. Parallel cancellation proceedings are pending before OHIM.

The cancellation request was rejected by the German Patent and Trademark Office. The office stated that, if the relevant consumers do not establish a thematic or factual link between the goods and the well-known person, the person’s name is not descriptive of the goods and does not lack distinctive character. It further stated that using a famous name as an advertising medium does not preclude the name from being perceived as a trademark.

The Federal Patent Court reversed the office’s decision and ordered the cancellation of the mark MARK TWAIN. The court agreed that the mark was not purely descriptive. However, due to the specific characteristics of the market for writing instruments, the name would not be understood as an indication of trade origin but, rather, as a dedication to the author Mark Twain as part of a special edition. The mark was, therefore, devoid of distinctive character. In the interest of competition and of the tradition of dedicating writing instruments to famous persons, there was a need to keep such names free for use.

German case law is inconsistent when it comes to the registrability of the names or images of famous persons. The prevailing rule seems to be that, if a possible use of the mark will be perceived by the public as trademark use, registration should not be refused. In the present case, the court took into account the practice in the field of writing instruments. Arguably, it must be welcomed that the court allowed the appeal on points of law regarding the question of whether the most likely way of use of the mark would determine registrability.

However, it remains to be clarified whether the ‘generous’ assessment of distinctive use would also apply if the trademark was used in connection with services. Some see a parallel with the refusal to protect geographical indications as trademarks where there is a need to prevent their monopolisation, as provided by the Court of Justice of the European Union in the 1999 Chiemsee decision. It is argued that there is a need to ensure that not only signs indicating the quality and other characteristics of the goods, but also signs leading the public to establish a connection between the products and a famous personality, remain free for use.

It remains to be seen whether the Supreme Court will use this case to bring more clarity to this somewhat confused issue.

Karin Costescu, Bardehle Pagenberg, Munich