In Febuary 2014 the German Federal Patent Court delivered a groundbreaking decision concerning the distinctiveness of a device mark (30 W (pat) 14/12). This liberal ruling has been welcomed enthusiastically.

The applicant had applied for a device mark showing images of Michelangelo’s David and Botticelli’s Venus. Although the German Patent and Trademark Office had previously rejected the application for lack of distinctiveness, the court has now overturned that decision.

David and Venus are world-famous works by Italian Renaissance artists and have often been used in advertising by various companies as symbols of timeless beauty and physical perfection. In the case at hand, the trademark application depicted only the heads of David and Venus facing each other and appearing to gaze into each other's eyes, like a couple in love. The application was filed for body and beauty care products in Class 3, pharmaceutical preparations in Class 5 and related services in Class 44.

Similar to European trademark standards, under German law a trademark must be distinctive in order to fulfil the essential function of a trademark. Therefore, it must be possible for the relevant public to identify, without any possibility of confusion, the goods or services bearing the mark for which registration is sought as originating from a given undertaking, as distinguished from the goods or services of other undertakings. aIn this case, the court correctly identified the relevant public as the average German consumer, drawn from both professionals and the public at large and deemed to be reasonably well informed, observant and circumspect. Leaving open the question of whether the public in question could classify the pictorial representations as coming from the Renaissance period and recognise them as symbols of beauty, the court confirmed that the German Patent and Trademark Office had been correct in finding that images of both Michelangelo's David and Botticelli's Venus were frequently used in advertising to allude to beauty and health. Nevertheless, the court also expressed doubts that each image could describe directly goods and services in Classes 3, 5 and/or 44.

Of course, even if the artistic icons were not descriptive, the question remained of whether each had a distinctive character and could distinguish goods and services from those of other companies. However, this question was not addressed for a simple reason: the particular composition, in which David appeared to be looking into Venus’s eyes, was unusual and sufficient to give the mark distinctive character. Both the choice of image detail and portrayal and the arrangement of the faces provided the sign with distinctive character. Thus, the court disagreed with the German Patent and Trademark Office’s conclusion that the combination of the images lacked any distinctiveness. The court accorded due weight to the fact that the trademark applicant did not merely use commonplace imagery, but rather creatively combined two well-known metaphors for beauty and health to form an image which reinforces their meaning and gives them an unmistakable and characteristic look.

This decision fuels hope that the German Patent and Trademark Office – and other national trademark offices – will avoid a blanket approach when rejecting trademark applications with descriptive tendencies.

Nicole Ockl

This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.