Trademark protection for a sign requiresdistinctiveness of the respective sign. In a recent decision, the German Federal Court of Justice (BGH) has made some remarks of general interest about this requirement for protection (Decision of December 21, 2011 – I ZB 56/09 – Link economy).
According to that decision, a “liberal standard is to be applied” in general. If the trademark application consists of a plurality of words, lack of distinctiveness could only be assumed if the sign only involves merely descriptive information or promotion and advertising messages of a general nature. Furthermore, long phrases will generally not be distinctive. In contrast, characteristics such as brevity, a certain degree of peculiarity and conciseness of a phrase may indicate that a sign is distinctive. The same applies to ambiguity and a need for interpretation of a phrase.
The BGH particularly criticized the contested decision of the Federal Patent Court (BPatG) for deriving a lack of distinctiveness on the basis of a sequence of considerations. Instead, an “obvious and immediately graspable descriptive meaning” must exist to render a mark indistinctive.
It is particularly remarkable that the BGH mentions ambiguity as a criterion for registrability. Under the practice of the recent years, applicants have regularly failed with this argument (cf. e. g. Decision of January 22, 2009 – I ZB 52/08: “… Moreover, it is sufficient for the existence of this ground of refusal, if the sign comprises a descriptive character in at least one of its possible meanings …”). In the present case, however, the BGH found that obviously various interpretations of the applied trademark “Link economy” existed for the goods and services in question. Up to now, this has not been a valid argument for protectability (cf. BPatG, Decision of July 5, 2011 – 27 W (pat) 161/10: “…If with respect to the applied goods and services all interpretations prove to refer to the products or to be otherwise unsuitable to involve an indication of origin, different meanings of a trademark could not establish its distinctiveness …”).
Interestingly, the BGH pointed to the fact that the trademark examiner who made the first instance decision had presented another interpretation of the slogan than the judges of the BPatG. In addition, the BGH has found that that just a handful of – predominantly English – internet print-outs qualified as a proof for a certain understanding of the mark by the relevant German public (similarly, for only a single example as proof of prior usage of a colour mark: Decision of March 1, 2001 – I ZR 57/98 – Farbmarke violett). This may be understood as a hint for trademark examinerst and the BPatG that refusals of applications should be based on a more extensive factual basis.