FEDERAL COURT OF JUSTICE, DECISION OF 17 AUGUST 2010, I ZB 59/09, SUPERGIRL

The Federal Court of Justice stated that the German Patent and Trademark Office (GPTO) is not obliged to disclose its reasons for a dissenting decision regarding prior registrations. Although prior registrations must be taken into account, they are not binding since each case must be examined individually in light of the applicable legal provisions.

In 2007, Hubert Burda Media Holding GmbH & Co. KG (Hubert Burda Media) applied for the registration of the word mark "SUPERgirl" in classes 16, 35, and 41. The GPTO refused the registration due to lack of distinctiveness. Hubert Burda Media objected to this and, in particular, referred to its prior registrations "SUPER ILLU," "SUPER TV," "Super Spaß," and "Super Dog" — however, GPTO's examiner confirmed the rejection.

On appeal, the 29th Senate of the Federal Patent Court held that GPTO's decision was not in line with the rulings of the Court of Justice of the European Union in the decisions "Volks.Handy" and "SCHWABENPOST"1 — which oblige national authorities to take into account prior registrations. The court said this obligation comprised both the consideration of prior decisions and also the disclosure of the reasons why the specific case should deviate from prior decisions. As no reasons had been given, the court found that the decision was subject to a procedural mistake and referred the case back to the GPTO.

Hubert Burda Media appealed against the referral to the Federal Court of Justice.2

The Federal Court of Justice agreed that the Federal Patent Court should have made its own decision. The GPTO had not made a procedural mistake by not disclosing its reasons for the dissenting decision regarding prior registrations. For the decision of the registration of a trademark, the GPTO must examine if there are absolute grounds for refusal. As the GPTO also took into account prior registrations for its examination, this was sufficient and, therefore, in line with the case-law of the CJEU. The equality principle could not lead to a decision that disregarded the applicable legal provisions.

With this decision, the Federal Court of Justice finally settled the dispute about the practical consequences arising from European case law regarding the obligation of the national trademark offices to disclose their reasons in application proceedings. The GPTO must consider prior registrations; however, it is neither obliged to disclose its reasons for the dissenting decision nor to examine prior decisions in detail.

The court missed the chance to make the registration practice more plausible and predictable for future applicants. However, the standard examination of a trademark application always includes a search for similar cases. Nevertheless, it is advisable to bring forward comparable registrations in detail in order to demonstrate the prior registration practice plainly.