#Distinctiveness and how to prove it – some EU Court directions

pexels-photo-1536891The European Court has ruled in case C‑541/18  AS v Deutsches Patent- und Markenamt. The case concerns the issue what trademark use can contribute to the trademark distinctive character. In detail:

AS applied to the DPMA for registration of the sign comprising the hashtag #darferdas? as a trademark in respect of goods in Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

The goods in respect of which registration was sought corresponded to the following description: ‘Clothing, in particular tee-shirts; footwear; headgear.’

The DPMA rejected the application, since the sign at issue was, in its view, devoid of any distinctive character within the meaning of Paragraph 8(2)(1) of the Law on the protection of trademarks and other distinctive signs.

AS brought an action against that decision before the Bundespatentgericht (Federal Patents Court, Germany).

By order of 3 May 2017, that court dismissed the action. It held that the sign at issue represented a sequence of characters and words joined together essentially composed of common German words. It was merely a stylised presentation of a discussion point. The hashtag indicated solely that the public is invited to discuss the question ‘Darf er das?’ (‘Can he do that?’). The public would understand that question — placed, inter alia, on the front of tee-shirts — for what it is, namely a simple interrogative phrase.

AS brought an appeal against that decision before the Bundesgerichtshof (Federal Court of Justice, Germany).

According to the referring court, it cannot be excluded that the use of the sign at issue on the front of clothing is one amongst several types of use. That sign could also be placed on the label sewn on the inside of garments. In that case, the public could perceive that sign as a mark, that is to say, as an indication of the commercial origin of the goods.

The referring court states that it is clear from its own case-law that, in order for a sign to be regarded as having a distinctive character and, consequently, being eligible for registration as a mark, it is not necessary that every conceivable use of that sign be use as a mark. It is sufficient that a use be plausible and there be practically significant possibilities of using the sign applied for in the case of the goods and services in respect of which protection is claimed in such a way that it is easily understood by the public as a trademark.

That court considers that that approach could be reconciled with paragraph 55 of the order of 26 April 2012, Deichmann v OHIM (C‑307/11 P, not published, EU:C:2012:254), according to which Article 7(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) could not be interpreted as requiring the Office for the Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) to extend its examination, based on the facts, of distinctive character to uses of the mark applied for other than that recognised as the most likely.

However, harbouring doubts in that connection, the Bundesgerichthof (Federal Court of Justice) decided to stay the proceedings and to refer the following question on Article 3(1)(b) of Directive 2008/95 to the Court for a preliminary ruling:

‘Does a sign have distinctive character when there are in practice significant and plausible possibilities for it to be used as an indication of origin in respect of goods or services, even if this is not the most likely form of use of the sign?’

The Court’s decision:

Article 3(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trademarks must be interpreted as meaning that in examining the distinctive character of a sign in respect of which registration as a trademark is sought, all the relevant facts and circumstances must be taken into account, including all the likely types of use of the mark applied for. The latter corresponds, in the absence of other indications, to the types of use which, in the light of the customs in the economic sector concerned, can be practically significant.


Marks, furniture, and distinctiveness in Finland


Marques Class 46 (information by Suvi Haavisto) reports about an interesting case regarding trademark lawsuit in Finland.

Laulumaa Huonekalut Oy, a furniture producer, filed a trademark infringement claim against Pohjanmaan Kaluste Oy, claiming that this company had been using its registered combine trademarks SARA, OLIVIA and SOFIA (in class 20) for branding different items of furniture.  Laulumaa asked the Court to order Pohjanmaan to cease the infringement and a compensation to be paid.

Pohjanmaan rejected this claim stating that those names were widespread in Finland for branding furniture for many years so in light of this they are not distinctive.

The Court allied with Pohjanmaan confirming that the names are not distinctive. The scope of protection of the already registered marks is limited only to their combine nature. In the case at hand, however, Pohjanmaan didn’t use these combine trademarks but only word names in standard font. So in that regard, there is no infringement.

This case is quite indicative of the way how applicants define their trademark strategies. Some companies, in an attempt to escape possible trademark refusals by Patent Offices, applied for not so distinctive signs combining them with graphical elements or fonts. Although they can register such marks successfully most of the times, this, unfortunately, doesn’t mean that they can rely on them in such lawsuits because of the limited scope of protection.