The German Federal Patent Court ordered the cancellation of the word mark “MARK TWAIN” for writing instruments stating in the essence the following: If the public perceives a mark to be a dedication to a famous personality, then it does not function as an indication of origin. And: The examination of distinctiveness can be limited to the manner of use which the court recognizes to be most likely.

Montblanc, manufacturer of high-quality writing instruments as well as of further lifestyle products, has since 1992 annually launched writing instrument sets as a “Limited Writers Edition”. The products of this series are to “honor” the life and work of great personalities of literary history. In August 2010, Montblanc brought writing instruments with the inscription “Mark Twain” on the market. This resulted in a conflict with a promotional items producer, who is the owner of the Community trademark “MARK TWAIN” for “writing instruments” in class 16 and who also obtained the registration of a German trademark of the same name for the same goods in November 2010. Montblanc requested cancellation of the German mark. Parallel cancellation proceedings are pending before OHIM.

The cancellation request was rejected by the German Patent and Trademark Office: It is stated that if the consumers targeted do not establish a thematic or otherwise factual relation between the goods and the well-known person; the person’s name is not descriptive of the goods and not lacking in distinctive character. It is further stated that using a famous name as an advertising medium does not preclude the name also being perceived as a trademark.

The German Federal Patent Court reversed and ordered the cancellation of the mark “MARK TWAIN”. The Court agreed that the mark is not purely descriptive. However, due to the specific characteristics of the market for writing instruments, the name is not understood as an indication of a particular trade origin but rather as honoring the person and as the dedication of the writing instrument to the author as part of a special edition. The mark is, thus, devoid of distinctive character. Applying “Mark Twain” to writing instruments will not be perceived as a trademark. In the interest of ensuring competition and the tradition of such writing instruments dedicated to persons, there is also a need to ensure free use of such names.

Remarks

German case law is inconsistent when judging the registrability of the names or images of famous persons. The prevailing rule seems to be that if a use of the mark is possible which will be perceived by the public as trademark use, registration should not be refused. In the present case, the Court took into account the practice in the field of writing instruments in refusing registration. Therefore, it is to be welcomed that the Court allowed the appeal on points of lawregarding the question as to whether the most likely form of use will determine registrability.

It also remains to be clarified whether the generous assessment of possibilities for distinctive use is also necessary if the trademark is not used in connection with goods but rather with services. Some see a parallel to the refusal of protecting geographical indications as trademarks when there is a need to prevent their monopolization, as developed by the Court of Justice of the European Union in the well-known “Chiemsee” judgment of 1999. It is argued that there is a need to ensure free use not only for signs indicating the quality and other characteristics of the goods concerned. Rather, there is also a need to ensure free use where the public establishes a connection between the product and a historical personality creating a positive association. It remains to be seen whether the German Supreme Court will use this case to bring more clarity in this somewhat confused situation.