The German Federal Court of Justice clarifies that a consumer awareness of 43 % is not sufficient to prove that a descriptive trademark, in this case the trademark "test", acquired distinctiveness through use.

Background

Stiftung Warentest is Germany’s most famous consumer organization involved in conducting product tests by comparing goods and services of different brands. Stiftung Warentest has been using the trademark “test” since 1966. In 2004 Stiftung Warentest obtained a trademark of a combined word/logo for the sign “test” (white letters on a red background) for test magazines, consumer information and publication of consumer goods tests. Axel Springer Verlag, a well- known German publishing house, started cancellation proceedings against this trademark after Stiftung Warentest challenged Axel Springer’s magazine title "Auto test” (“Automobile test”).

The German Patent and Trademark Office held that the trademark "test" is merely descriptive for its registered goods and therefore ordered the cancellation of the given trademark. The German Federal Patent Court  saw this differently and rejected Springer’s cancellation request. The judges took the view that the trademark “test” acquired distinctiveness in the relevant public as a result of its intense and long-lasting use. This result had been proven by a market survey in 2009 according to which 43% of the relevant consumers perceived the trademark "test" as an indication of origin.

Decision of the BGH

The German Federal Court of Justice (BGH) now disagreed with the German Federal Patent Court with regards to the relevance of the market survey. The judges made clear that the awareness of 43 % of the involved public did not suffice to prove that the mark “test” acquired distinctiveness through use.

In addition to that, the BGH pointed out that the trademark at hand had not been used in its registered form since May 2008 and concluded that it cannot be ruled out that the 43% could have further decreased since then. Other factors such as market share, circulation numbers, advertising costs and duration of the sales of the magazine were in the given case not sufficient to assess an acquired distinctiveness.

The BGH referred the matter back to the German Federal Patent Court. The German Patent Court has now to decide whether the mark "test“ already lacked an acquired distinctiveness in 2004, the year of its registration. In this respect, the judges made clear that a registered German national trademark, which had been registered on the basis of acquired distinctiveness, could only be invalidated if it already had lacked acquired distinctiveness at the time of its registration and still lacks acquired distinctiveness at the time of the decision regarding its invalidity.

Comments

The decision illustrates once more the high threshold for successfully arguing that a descriptive trademark became established in trade. The BGH still regards the percentages of awareness as the main factor to assess an acquired distinctiveness. In this respect, the Court appears to have maintained its yardstick that at least  50 % of the relevant public has to associate a given mark with a specific company in order to prove the acquired distinctiveness of a given trademark.