FEDERAL PATENT COURT, DECISIONS OF 11 JANUARY AND 1 FEBRUARY 2011, 27W (PAT) 278/09, 279/09, 280/09, 281/09, 282/09, 283/09

In a series of recent decisions the Federal Patent Court softened its strict approach for assessing the distinctiveness of figurative signs for use on products. It is now possible to evaluate with greater certainty whether such a trademark will be accepted by the German Patent and Trademark Office (GPTO).

Heinrich Deichmann-Schuhe GmbH & Co. KG (Deichmann) filed six figurative marks for "footwear" in class 25: click here to view Deichmann's trademarks.

The GPTO refused the registrations, holding that the signs lacked distinctiveness. The relevant public would regard them only as decorative elements commonly used in the relevant sector and as representations of the design of the relevant shoes.

The Federal Patent Court annulled the decisions. It stated that, in particular in the sector of footwear, it was common to use graphical elements as indications of origin.

Since the trademarks had not been filed as position trademarks, they might not only be used on the outer sides of the shoes but also on their packaging or soles. As the relevant public generally perceived graphical elements as indications of origin, distinctiveness could not be declined — even for simple geometric forms.

Furthermore, the court found that the signs not only consisted of graphical elements but also included a conceptual content of (Roman) letters so that they had specific meanings, e.g., the letters "XI" stood for the Roman numeral 11, the letters "IX" for the Roman number 9, the letter "V" or "U" for the Roman numeral 5, the letters "IXI" for a combination of the Roman numerals 1, 10, and 1 and the letter "X" for the Roman numeral 10. Therefore, the trademarks were not just decorative details but also gave an overall impression sufficient for indicating origin.

The Federal Patent Court concluded that the trademarks were distinctive and could be registered.

In order to gain trademark protection for simple figurative signs, they should be filed without the products to be used on. Moreover, it certainly helps if the signs can also be regarded as letters, numbers, etc., and not merely as simple signs.