The Federal Patent Court recently issued a judgment(1) dealing with a sequence of letters that a company in the pharmaceutical sector wanted to register as a trademark. According to the court, a sequence of letters is not eligible for registration when it is a descriptive term's common acronym and is understood as such by the relevant public.

Facts

MPH Mittelständische Pharma Holding AG sought registration of the word mark MPH as a trademark for goods and services in Classes 5, 35, 36 and 41. The trademark division of the Patent and Trademark Office rejected the application for a majority of the goods and services due to lack of distinctive character. It was believed that the relevant public would understand the letter sequence 'MPH' as an acronym for the active substance methylphenidate (used to treat attention-deficit hyperactivity disorder). The company filed a complaint against the decision. The complainant held that the letter sequence exhibited an indeterminate nature that was grounds for protection. The letters could represent so many terms that unambiguous assignment was impossible, meaning no descriptive meaning could be determined. Potential meanings included 'male pseudohermaphroditism', 'melphalan', 'master of public health' or 'miles per hour'.

Decision

The Federal Patent Court largely rejected the complaint. With the exception of dietetic substances adapted for medical use (Class 5) and advertising services (Class 35), the court saw no overriding descriptive content, since 'MPH' does not represent a common acronym for these goods and services. With regard to advertising, the court held that it would apply, even where it concerned advertising methylphenidate. The description of the advertising services by the specifically advertised product did not correspond to industry habits. However, the mark lacked the distinctive character required for registration for other goods and services. Letters and letter combinations regularly lack such distinctive character where they are common acronyms of descriptive terms that are understandable to the relevant public.

The court set out the meaning of the mark MPH which could be expected to be understood by the relevant public in the respective product categories. Accordingly, in Class 5 goods the meaning of 'methylphenidate' or 'melphalan' would be paramount. 'MPH' had been used as such an acronym at the time of the application in 2011. For services in Class 35 (eg, the organisation of exhibitions), 'MPH' was descriptive, since the letter sequence was considered an indication of 'methylphenidate'. For services in Class 41 (including the organisation of seminars in the medical and pharmaceutical fields), an understanding of MPH as an abbreviation for 'master of public health' was established.

Comment

The court examines precisely each individual product or service if a sequence of letters represents a common acronym of descriptive terms understandable by the relevant public. The ambiguity of the letter sequence does not give a mark distinctive character, even when it is the acronym of an applicant's company name.

For further information on this topic please contact Margret Knitter at SKW Schwarz Rechtsanwälte by telephone (+49 89 286 40 300) or email (m.knitter@skwschwarz.de). The SKW Schwarz Rechtsanwälte website can be accessed at www.skwschwarz.de.

Endnotes

(1) Federal Patent Court, July 29 2015, 29 W (pat) 78/12 – MPH.

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