The fictional character “Pippi Langstrumpf” (“Pippi Longstocking” from the books by the author Astrid Lindgren) has once again been the subject of legal proceedings in Germany.This time the German Federal Court (BGH) has ruled on the distinctive character of the word mark “Pippi Langstrumpf” in relation to the services of “temporary accommodation” protected under class 42 (case ref. I ZB 97/16). In our Brands Update April 2017, we already mentioned the decision under appeal in our article “The distinctiveness of a famous fictional character (“Pippi Longstocking”). In that decision, the German Federal Patent Court (BPatG) ruled that the trade mark “Pippi Langstrumpf” in class 42 was liable to cancellation due to the lack of distinctiveness (case ref. 27 W (pat) 59/13). Now the BGH has set aside that decision and remitted the case to the BPatG for reconsideration.
In the decision under appeal, the BPatG had ruled that the sign “Pippi Langstrumpf” was descriptive in relation to “temporary accommodation” because the sign would contain the descriptive information that the accommodation offer is specially developed to meet the needs of children. It allegedly indicates that special toys and other children’s equipment are available or that the public can make use of other special childcare offers.
On the contrary, the BGH has now ruled that the sign “Pippi Langstrumpf” does not lack any distinctiveness in relation to the protected services “temporary accommodation” and that the BPatG has set too strict requirements regarding the assessment of the distinctive character of a trade mark. The BGH pointed out that a word element is of a descriptive nature if the public is able to grasp the descriptive meaning of the word directly and without any uncertainties in relation to the goods and services in question. The public will normally not analyse the trade mark to identify its meaning.
Therefore a lack of distinctiveness cannot be assumed if the descriptive character can only be identified after a careful analysis. In the case at issue, the BGH clarified that the fictional character “Pippi Langstrumpf” does not describe the protected services of “temporary accommodation” without such a detailed analysis, because for the average public a link between the two terms (“Pippi Langstrumpf” and “temporary accommodation”) is not apparent at first glance. In the case that a trade mark might evoke certain attributions and associations, a slight note of descriptiveness can be assumed at the most. However, that is not enough to establish the lack of distinctiveness. Rather it gives the trade mark only a promotional character which does not prevent registration or supports its invalidity.
The decision of the BGH illustrates once more that every case is unique and underlines that the requirements relating to the distinctiveness of a trade mark may not be overstretched. The relevant public must recognize the descriptive character of a trade mark without any detailed analysis in relation to the goods and services in question in order for an application to be refused.