POST mark cancellation upheld by Federal Patent Court
In a recently published decision, the German Federal Patent Court has upheld the ruling of the Patent and Trademark Office (PTO) to cancel the trademark POST registered by Deutsche Post AG (Case 26 W (pat) 24/06, April 10 2007). Deutsche Post is the successor of the former state-owned Federal Postal Administration, which was privatized in 1995. Following privatization, Deutsche Post registered the mark POST for various postal services. A competitor later complained to the PTO, stating that by registering the trademark POST, Deutsche Post was trying to monopolize the term 'POST' and prevent competitors from using it. The PTO agreed and Deutsche Post appealed.
Dismissing the appeal, the Federal Patent Court held that the term 'POST' was already descriptive for postal services at the time of registration and was therefore incapable of distinguishing the services concerned from those of other undertakings. Referring to the Postkantoor decision of the European Court of Justice, the court stated that the term 'POST' describes the body which delivers letters as well as the goods consigned. Despite the privatization, consumers are still accustomed to using the term 'POST' even when letters are delivered by another postal firm. As the word 'POST' is also part of several other words of the postal business such as 'postcard' or 'postman', the court ruled that the term's lack of distinctiveness is obvious. The business field is generally referred to as the 'postal system' and, furthermore, Deutsche Post's competitors are described as the 'post services industry'.
The court also held that the lack of distinctive character of the word 'POST' was not overcome by secondary meaning based on the use of the mark POST for the services registered. While the court noted that Deutsche Post was entitled to claim secondary meaning of the term 'POST' despite having held, in its previous incarnation, a monopoly position, the court pointed out that the descriptive term must be identified by the relevant class of persons as an indication of the industrial origin of the services rendered by Deutsche Post. However, Deutsche Post could not prove that the term 'POST' was used as a trademark. It used the term in relation to postal services either in combination with other words or devices, or the colour yellow. The court rejected Deutsche Post's survey evidence, showing recognition levels of between 70% and 80%. It held that this degree of awareness was not sufficient to overcome the descriptive character of the trademark. Because of the mark's high level of descriptive character and Deutsche Post's former monopoly position, the court required an "almost unanimous" secondary meaning. It defined the phrase 'almost unanimous' as "without exception". As Deutsche Post had failed to prove secondary meaning, the appeal was rejected.
Deutsche Post now has the possibility to appeal to the Federal Supreme Court.
Christina Hackbarth, Beiten Burkhardt, Munich
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