Federal Patent Court, decision of 12 November 2010, Ref.: 28 W (pat) 2/10 - Naturplus
Pursuant to Section 3 (1) MarkenG, all signs, in particular words including personal names, images, letters, numbers, sounds, three-dimensional designs including the shape of a product or its packaging and other forms of presentation including colours and colour combinations, which are capable of distinguishing the goods or services of one undertaking from those of other undertakings may be protected as trade marks.
In Germany, the German Patent and Trade Mark Office (DPMA) is responsible for the registration of trade marks as the central authority in the field of industrial property protection in Germany.
However, in order to be recognised as a word mark by the DPMA, the respective mark must have a certain degree of originality.
The DPMA therefore examines the trade mark application for absolute grounds for refusal (see Section 8 MarkenG). Absolute grounds for refusal are, for example, the lack of distinctive character of the trade mark, descriptive indications to be kept free for general use, a clear risk of being misleading, signs of public authority contained in the trade mark or an offence against public morality or public order.
The Federal Patent Court (BPatG) is responsible for deciding on appeals against decisions of the DPMA on the granting of patents, utility models, trade marks, etc. The BPatG specialises in the protection of industrial property rights and has nationwide jurisdiction. This is a court specialising in the protection of industrial property rights with the rank of a higher regional court with nationwide local jurisdiction.
In the above-mentioned decision, the BPatG now had to decide whether a company in the food industry can register the word mark "Naturplus" as a designation for food.
FactsThe complainant applied for registration of the word mark "Naturplus" in the trade mark register of the German Patent and Trade Mark Office as a designation for meat and meat products, etc. The trade mark office of the DPMA rejected the application on the grounds that the designation "Naturplus" lacked any distinctive character for the goods applied for. The trade mark office of the DPMA rejected the application on the grounds that the designation "Naturplus" lacked any distinctive character for the goods applied for pursuant to Section 8 (2) No. 1 MarkenG.
The frequently used term "natural" is understood in the food sector by the relevant public as a reference to natural or untreated products or natural products. The further element 'plus' merely expresses, in the form customary in advertising, that the product thus labelled has an additional advantage or benefit. Taken as a whole, the relevant public would merely take from the designation applied for the promotional indication that the goods claimed are natural products or products made from natural raw materials and that they have a plus, i.e. advantages over competing products.
The complainant, on the other hand, took the view that the concise term "Naturplus" could very well be understood as a means of differentiation. The combination of the elements "nature" and "plus" did not constitute a summary that was customary in advertising. The term "plus" could have a variety of meanings, with the result that the designation applied for was open to interpretation. The use of the term "nature" in advertising, both on its own and in combination with other terms, does not argue against an indication of origin function. Due to the atypical and original combination with the term "Plus", the existence of distinctive character was to be assumed, whereby even the slightest degree was sufficient in relation to the goods applied for. There was no apparent interest on the part of competitors in the free use of the composite term, so that there was no need to keep it free.
Federal Patent CourtThe BPatG did not agree with the appellant's view. The term "nature" was recognisably a key term for the food sector, which the applicant did not dispute. However, to the extent that it considers that the ambiguity of the element "plus" establishes the required minimum degree of distinctiveness, it cannot be accepted. According to settled case law, distinctive character within the meaning of the aforementioned provision means that the trade mark applied for is capable, in the perception of the relevant public, of identifying the goods claimed as originating from a particular undertaking and thus distinguishing that product from those of other undertakings. If a trade mark is unable to fulfil this origin function, it is contrary to the public interest protected by Section 8 (2) No. 1 MarkenG to monopolise the sign in question by entering it in the register for the benefit of an applicant and to permanently withdraw it from use by the general public.
Source: Federal Patent Court
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