On February 19, 2014, the German Federal Supreme Court confirmed a decision of the German Federal Patent Court of October 9, 2012, which had invalidated the German part of International Registration No 797277 “HOT”. The Court’s official headnote reads as follows:
When a trademark (here: “HOT”) has several meanings (here: aside from “hot” also “spicy, hotly spiced, piquant” in relation to taste and figuratively also “sexy, trendy, great”), all of which are descriptive for the registered goods (here: inter alia, cleaning preparations, body care preparations, food supplements, printed matter, and clothing), the interpretative effort caused by the different possibilities of understanding the term does not as such suffice to confirm distinctive character.
The contested mark shown below
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had been registered for “bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, massage oils, gels, face creams; hygienic products for medicine; nutritional supplements (adapted for medical use); lubricants for pharmaceutical purposes; paper, cardboard and goods made thereof, not included in other classes, printed matter, including calendars, labels for goods, photographs; clothing and footwear” in classes 3, 5, 16 and 25. The validity of the registration was challenged by Australian Gold, Inc., represented by BARDEHLE PAGENBERG. The challenge was based on the absence of distinctiveness of the mark for all the goods.
On March 22, 2011, the German Patent and Trademark Office issued a decision, invalidating the contested mark as regards “bleaching preparations and other substances for laundry use; soaps; perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, massage oils, gels, face creams; nutritional supplements (adapted for medical use); lubricants for pharmaceutical purposes; printed matter, including calendars, labels for goods, photographs, clothing and footwear” due to lack of distinctiveness, but maintained the registration for the goods “cleaning, polishing, scouring and abrasive preparations; hygienic products for medicine; paper, cardboard and goods made thereof, not included in other classes”. Both parties appealed. The Federal Patent Court confirmed and, upon Australian Gold’s cross-appeal, extended the invalidation to all goods.
Protection for the same mark was also refused by the Australian, UK and Japanese Patent Offices. A case concerning the extension to the EU is pending before the General Court of the European Union.
The case is also interesting because the trademark proprietor had previously obtained preliminary injunctions from German courts, which had found the mark sufficiently distinctive and refused to suspend cases to await the outcome of the cancellation actions. The proprietor’s challenge of the Federal Patent Court’s decision for having disregarded these court decisions was dismissed. According to the Supreme Court, the Federal Patent Court discussed the corresponding submission of the trademark owner and correctly found that the civil courts in the infringement proceedings did not actually review the protectability of the trademark but were bound by its registration. In fact, under German law, in infringement litigation an attack on the validity of the allegedly infringed marks on grounds of descriptiveness or absence of distinctiveness is not allowed; such a challenge must be brought before the German Patent and Trademark Office, as was done in the present case which led to a confirmation of the cancellation (invalidation of the German part of the international registration) by the German Supreme Court.