On 14 November 2012 the German Federal Patent Court decided (file no. 28 W (pat) 518/11) that the letter “M” in the context of “sports cars” in class 12 is eligible for registration as a trademark – as filed for by BMW. The full decision was only published recently.
At an earlier hearing, the Trademark Section for class 12 at the German Patent and Trademark Office decided 15 December 2010, to reject the application due to a lack of distinctiveness. The Section stated that domestic consumers understood the trademark in relation to “Sports Cars” only as a relevant abbreviation for class, type, serial, equipment modification, or a model designation and did not assign any commercial origin to it. The ground for refusal of a lack of distinctiveness was not overcome by “acquired distinctiveness” pursuant to section 8(3) German Trademark Act. The survey provided by the applicant did not prove distinctiveness in the “relevant public” as it was not representative of the participants (consisting of only 231 interviewees).
The applicant filed an appeal. The court decided that the trademark “M” was distinctive as the relevant average consumer did not understand the letter “M” as a descriptive term for “Sports Cars” in class 12; rather “M” was an abbreviation for “medium”, “model” or “mega”, and in the motor vehicle arena the “M” as the first letter on German licence plates before the dash is the abbreviation for the city of Munich. Furthermore, “M” was also not to be kept available for competitors of the applicant. European Directive 2007/46/EC of 1 November 2007 contains a classification for cars for passenger transportation with at least four wheels. However, this classification is called “Class M”. Therefore, the letter “M” was not used and the companies concerned needed to describe passenger cars separately, including “Sports Cars”, but only in the combined form “Class M”.
Due to the lack of grounds for refusal according to Section 8(1) and (2) German Trademark Act, it was not decisive whether the trademark had gained “acquired distinctiveness” pursuant to section 8(3) German Trademark Act.
The German Federal Patent Court’s opinion corresponds with the intention of the German Trademark Act, as single letters and numbers are capable of being protected as a trademark pursuant to section 3(1) of the Act. The fact that the trademark consists of a single letter only is not sufficient on its own to reject a registration, provided that the letter is distinctive for the products in question; and that there are no other circumstances requiring that the letter be kept available for competitors.