Smartbook AG is the owner of the German trademark No 305 05 515 “smartbook” (word mark), filed on February 01, 2005, and registered on May 31, 2005, covering a large list of goods in classes 07, 09 and 14, inter alia, computer, notebooks and laptops. A request for cancellation on grounds of descriptiveness and absence of distinctive character, brought in 2009, was accepted by the German Patent and Trademark Office. However, upon the proprietor’s appeal, the Federal Patent Court reversed and dismissed the cancellation petition (cf. BARDEHLE PAGENBERG IP Report 2013/I). The further appeal brought by the cancelation petitioner was rejected by the German Federal Supreme Court.

The Federal Patent Court had emphasized that the finding of absolute grounds after a mark has been registered is subject to strict conditions. In addition, absolute grounds under Section 8 (2) No 1–3 German Trademarks Act are based on the specific interests of the competitors. As regards the inherent distinctiveness of the mark “smartbook”, the Federal Patent Court ruled that the mark had neither a direct meaning in relation to the goods in question at the time of registration, nor was a future descriptive use of the composite mark “smartbook” foreseeable.

The Federal Supreme Court essentially agreed with the lower Court, but added some clarifications. The existence of absolute grounds must be established to exist at the time of application of the trademark (in the present case the time expired between filing date and registration date was not material). Any remaining doubts must be resolved in favour of the trademark proprietor. Descriptive use after the filing and registration date does not prove descriptiveness at the time of application. Also, any subsequent descriptive use actually was made by the cancellation petitioner.


The judgment is of some significance because it emphasizes that post-filing descriptive use is not relevant for determining descriptiveness at the time of application. Also, where doubts remain, these must be resolved in favour of the validity of the registration.