Federal Patent Court makes U-turn in POST cancellation action

The Federal Patent Court has rejected an action for the cancellation of the German trademark POST (Docket 26 W (pat) 24/06, October 28 2010).
Deutsche Post AG is the legal successor of the former state-owned Federal Postal Administration. After its privatisation, it registered the word mark POST (Registration 300 12 966) for various postal services in Classes 35 and 39 of the Nice Classification (the application was filed in February 2000 and the mark was registered in November 2003 after submission of evidence of a secondary meaning). A competitor then filed a cancellation action, arguing that POST was merely descriptive and that the evidence of secondary meaning did not justify the registration of the mark.

On December 14 2005 the cancellation division of the German Patent and Trademark Office ordered the cancellation of the registration in its entirety. Deutsche Post appealed, but the Federal Patent Court dismissed the appeal (for further details please see "POST mark cancellation upheld by Federal Patent Court").
Deutsche Post filed a further appeal on grounds of law, which was allowed by the Federal Patent Court. On October 23 2008 the Federal Supreme Court reversed the previous decisions and the case was sent back to the Federal Patent Court for reconsideration (Docket I ZB 48/07).

The Federal Supreme Court confirmed that POST is merely a descriptive term which describes the services at issue, or is a synonym for the goods transported by Deutsche Post. However, the Federal Supreme Court disagreed with the Federal Patent Court with regard to the evidence of secondary meaning. The Federal Supreme Court confirmed that the descriptive character of the POST mark should be taken into account, as well as Deutsche Post's previous monopoly over postal services. As consumers were used to associating postal services with a single company due to Deutsche Post's longstanding monopoly, the level of recognition should be higher. The Federal Supreme Court refused to provide specific figures, but confirmed that the absolute minimum required is a level of recognition of 50%. If a term is descriptive, higher levels of recognition may be required, up to an “almost unanimous secondary meaning”. The Federal Supreme Court stated that a level of recognition of 84.6%, which was mentioned in a 2002/2003 survey and was deemed insufficient by the Federal Patent Court, clearly exceeded the minimum level of 50%. Therefore, the mark had acquired a secondary meaning. According to the Federal Supreme Court, requiring a higher level of recognition would make it almost impossible to prove the existence of a secondary meaning.
Further, the Federal Supreme Court stated that POST is descriptive in Germany and, therefore, the owner of the mark could not prevent competitors from using this term in a descriptive way (Paragraph 23(2) of the German Trademark Act). The Federal Supreme Court stated that POST had a very limited scope of protection and that the addition of other words to the term 'post' would be sufficient to avoid infringement. Further, if competitors do not use other protected signs of Deutsche Post, such as the colour yellow and the post horn, a likelihood of confusion could be ruled out. The Federal Supreme Court also questioned the Federal Patent Court’s conclusions as to the methodology of the surveys, and stated that any doubts concerning a mark's secondary meaning should not be held against the trademark owner, as the applicant for cancellation has the burden of proving that the mark should not have been registered.
The case was sent back to the 26th Senate of the Federal Patent Court for reconsideration following the guidance of the Federal Supreme Court. The Federal Patent Court asked the authors of the 2002 and 2005 surveys to provide written statements and to give evidence in the oral hearing. This time, the Federal Patent Court took a completely different approach and rejected the cancellation action. In its new decision, the court confirmed that POST was descriptive, but with regard to secondary meaning, it found that it should take into account the surveys and other circumstances, such as:

  • Deutsche Post's market share;
  • the intensity of use of the mark;
  • the geographical extent and duration of use;
  • Deutsche Post's advertising expenditure; and
  • other elements showing the notoriety of the mark.
These factors were not considered in the first decision.
Further, the Federal Patent Court stated that the 2002/2003 survey was sufficient to show that the mark had acquired a secondary meaning. It held that it had no objections against the questions used by the survey institute, even though it had expressed doubts in this respect in its first decision. The court had previously questioned whether the survey made a distinction between the use of POST as a service mark, as a company name and as a descriptive term. Only use as a service mark could justify a finding of secondary meaning. However, in the new decision, the court pointed out that, in the 2002/2003 survey, consumers were asked the relevant question only with regard to the use of POST as a service mark. According to the Federal Patent Court, it could not be ruled out that some interviewees might have been confused between the use of POST as a service mark and use of the mark in a descriptive way or as a company name. The court believed that this could not be held against Deutsche Post.
The Federal Patent Court also held, following the guidance of the Federal Supreme Court, that a level of recognition of 84.6%, or even slightly less, was sufficient to find that POST had acquired a secondary meaning.
Interestingly, articles in the media which had been completely disregarded in the first decision were used to prove that POST was perceived as a service mark of Deutsche Post by consumers. The court also referred to the 2005 survey - because the results were similar to those of the previous survey, the court found that there was no need to request a new survey.
Finally, the Federal Patent Court found that Deutsche Post had started using POST as a service mark before it filed the application for registration in February 2000. This is surprising because the court had expressed considerable doubts about this issue in its first decision. Because the Federal Supreme Court had left this question open, the Federal Patent Court could have maintained its previous decision without infringing the guidelines of the Federal Supreme Court. However, the Federal Patent Court took the view that use of POST as a trademark was demonstrated by old pictures of post office buildings. In this respect, the court even took into account the use of the terms 'Deutsche Post' with the colour yellow and the post horn, finding that POST was so well-known that it would still be perceived as a distinctive trademark when used with additional elements. 
The court also decided not to admit a further appeal on grounds of law, as it believed that all relevant questions had already been answered by the Federal Supreme Court. Theoretically, another competitor of Deutsche Post could start a cancellation action with a new set of facts. However, it will now be difficult to cancel the POST mark, following one decision of the Federal Supreme Court and two decisions of the Federal Patent Court. Nevertheless, competitors wishing to use the term 'post' may take heart from the following holdings of the Federal Supreme Court:

  • the POST mark has a very limited scope of protection;
  • the term 'post' can still be used in a descriptive way; and
  • competitors can use 'post' as a trademark as long as they add other elements and do not use other protected signs of Deutsche Post, such as the colour yellow and the post horn.
The value of the registration of POST as a word mark is thus fairly limited, but still confers exclusive rights on its owner.
Carsten Albrecht, FPS Rechtsanwälte & Notare, Hamburg

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