Federal Court of Justice, Decision of 24 June 2010, I ZB 115/08
The Federal Court of Justice ruled that for the assessment of the distinctiveness of a trademark, the common kinds of its use shall also be taken into account. The registration of a word sign cannot be refused on the ground that one of the several options to apply it to the goods or the packaging, and as such to serve as an indication of origin, might also be registered as a position mark. For the registration of the trademark, it shall be assessed whether the public perceives the sign as an indication of origin or as merely descriptive of the goods in question - regardless of its specific use on labels, tags, patches or the packaging of the goods.
The applicant applied for the cancellation of the German word mark "TOOOR!" ["GOAAAL!"], registered for goods and services in classes 9, 16, 25, 28, 35, 38 and 41, mainly claiming lack of distinctiveness. The German Patent and Trademark Office cancelled the trademark registration. The Federal Patent Court confirmed the decision, holding that the word "TOOOR!" was a general expression of the public when cheering for goals and it was also used in advertisements for a range of goods and services. Furthermore, the scope of protection of a trademark depended on its registration - therefore, if the distinctiveness of a word sign only resulted from its specific application on goods, the sign could only be registered as a position mark but not as a word mark.
On further appeal, the Federal Court of Justice annulled the decision with regard to clothing, shoes and sportswear in class 28. The court held that for the assessment of the distinctiveness of a trademark, the common kinds of its use - and not only one specific kind of use - should also be taken into account. It was sufficient if the sign could be used in some significant and obvious ways that the public perceived as an indication of origin - regardless of whether there were also other kinds of use the public might perceive as being descriptive. Furthermore, the registration could not be refused if one of these options to apply it to the goods or the packaging could also be registered as a position mark. Since the Federal Patent Court had not assessed if there were such significant and obvious ways to apply the "TOOOR" trademark to clothing, shoes and sportswear so that the public perceived it as an indication of origin, the Federal Court of Justice referred this question back to the Federal Patent Court.
With respect to all other classes, the court confirmed the decision of the Federal Patent Court, holding that the word "TOOOR" was descriptive of the goods and services in question.
In the decision, the Federal Court of Justice affirmed its approach that a sign which is perceived as an indication of origin because of its use on the product could be registered as a trademark. As in the past, the court applied a generous standard by accepting more than one kind of use indicating origin if the sign could be applied to the product in different positions.
Nevertheless, it is hard to predict whether the public perceives a sign in a specific position as an indication of origin. Therefore, the distinctiveness of signs that can be applied to products remains uncertain and, as a consequence, needs to be assessed on a case-by-case basis.■