The object of examination is the trade mark applied for as such.[1] Moreover, the average consumer normally perceives a trade mark as a whole and does not pay attention to the various details. In order to assess whether a trade mark is protectable, the overall impression it creates must therefore be taken into account.[2] The examination of certain elements of a complex trade mark cannot be dispensed with on the grounds that their weight in relation to the other elements can be disregarded.[3] Where trade marks consisting of words are at issue, the ineligibility for protection must be determined not only separately for each word, but also for the whole formed by the individual words.[4] The fact that each individual element is not registrable on its own does not exclude the possibility that their combination may be registrable.[5]
Thus, word formations such as 'baby-dry' cannot be regarded as descriptive in their entirety, even in connection with nappies; since in English it is unusual to place an adjective after a noun, such word formations are rather the result of a lexical invention and cannot be excluded from registration.[6] On the other hand, the word combination 'New Born Baby' describes the appearance of dolls designated by the trade mark and is therefore not eligible for protection.[7] 'PURE DIGITAL' is also descriptive of digital products.[8] Even if a certain term is only ever used descriptively in combination with another - such as the word 'Mozart' in 'Mozartkugel' - the public may already be able to infer a description from the isolated element; 'Mozart' is therefore descriptive of confectionery in the sense of a reference to a specific recipe.[9] A particular colouring of a sign can also be of significance.[10] Finally, in the case of a sign such as 'T-', the letter 'T' alone cannot be taken into account, but the entire sign including the hyphen must be examined.[11]
However,[12] the competent authority may first examine the individual design elements of the trade mark one after the other and only then determine the overall impression. It may be appropriate to examine each individual element of the trade mark in the overall assessment.[13] If a trade mark is composed of not protectable elements, this is an indication, but not a presumption,[14] that the trade mark as a whole is not protectable.
Thus, the mere juxtaposition of adjectives descriptive of characteristics - such as in the case of the name 'BIOMILD' for foodstuffs - without making an unusual change, in particular of a syntactic or semantic nature, can only lead to a trade mark which is descriptive as such.[15] Similarly, 'Giroform' for paper and stationery as a reference to forms in giro transactions[16] and 'Eurohypo' for financial services[17] are descriptive. Finally, the same applies to the trade mark 'STREAMSERVE'[18] for products in the IT sector, 'HAIRTRANSFER'[19] for products in connection with hair transplants, 'BLUE SOFT'[20] for contact lenses, 'Universaltelefonbuch' and 'Universalkommunikationsverzeichnis'[21] for data carriers and printed matter, 'GOLF USA'[22] for sporting goods and related services and the term 'adegaborba', which is composed of the Portuguese word 'adega' as the name of a production and storage facility for wine and the geographical indication 'Borba'.[23]
Conversely, it can happen that although a sign element would be protectable on its own, it becomes not protectable when combined with another element.
This is the case, for example, with the combination of abbreviations that are protectable in themselves in combination with the written-out long form of the abbreviation. Signs such as 'Multi Markets Fund MMF' or 'NAI - Der Natur-Aktien-Index' in the financial sector are therefore not protectable.[24]
A sign composed of several not protectable elements is only protectable if there is a noticeable difference between the word and the mere sum of its components. On the one hand, this is the case if the word, due to the unusual nature of the combination in relation to the products mentioned, creates an impression which differs sufficiently from that created by the mere combination of the indications which can be derived from the individual components and which thus goes beyond the sum of these components. On the other hand, there is a sufficiently appreciable difference between the word combination if the word has entered into common usage and has acquired a meaning of its own, so that it is now autonomous in relation to its components; it must still be examined whether the word, which has acquired a meaning of its own, is not itself descriptive within the meaning of that provision.[25]
Thus, the GC could rightly assume that the sign 'Companyline' for insurance and financial services lacked any distinctive character. A combination of the two terms 'company' and 'line', which are commonly used in English-speaking countries, without any graphic or substantive change, does not have any additional feature that would make the sign as a whole capable of distinguishing the applicant's services from those of other companies.[26] Furthermore, 'ALLSAFE' was not protectable for various products related to security.[27] The fact that the word combination 'Rheinpark-Center Neuss' is not lexically verifiable does not prevent the sign from being not protectable for various services.[28] Furthermore, the sign 'Sudoku Samurai Bingo', which was composed of the names of two types of games, was not protectable.[29] On the other hand, 'SAT.2 ' was sufficiently distinctive for satellite-related services because trade marks composed of a word and a numerical element are common in the service sector in question and the public is therefore accustomed to such weak distinctive signs.[30] The letter combination 'AC' is also not descriptive of vitamin preparations. The fact that the individual letters 'A' and 'C' alone designate vitamins does not render the letter combination not protectable.[31] Finally, in the case of the sign 'I. T.@MANPOWER', the sign '@' is more likely to be understood as designating IT services supplied by a company Manpower; the trade mark is therefore not descriptive of employment agency services.[32]
However, in the German language in particular, it is common in the advertising and marketing industry to omit spaces, certain articles, pronouns, connective words or prepositions between terms.
There is therefore no noticeable difference between the descriptive words 'Berlin' and 'Gas' and their combination to 'berlinGas' between the compound word and the mere sum of its components.[33]
The BGH infers from the fact that the overall impression of a sign must be taken as a starting point that the sign may not be subjected to a more detailed analysis.[34]
Thus, the BGH did not even want to attribute any decisive significance - too broadly - to the fact that the two components 'PRO' and 'TECH' of the trade mark 'PROTECH' each have descriptive content in connection with tennis rackets, namely on the one hand 'PRO' has the meaning of 'for' and is also a common abbreviation of 'professional/professional' and on the other hand 'TECH' stands for 'technique/technology'. Rather, the trade mark as a whole should be taken into account. Therefore, grounds for refusal should be rejected.[35]
On the other hand, the fact that the trade mark as such is to be taken as the basis for the examination also means that no components may be added to it.[36]
The fact that the term 'Baby-dry', for example, describes the characteristics of nappies in the phrase 'to keep a baby dry'[37] does not lead to the sign 'Baby-dry' being considered as such not being protectable.[38] The term 'à la Carte' is protectable for books and magazines because further meaningful words would always be required to describe characteristics.[39] On the other hand, the examination of the technical functionality of a shape mark can also be based on elements that are not reproduced in the trade mark itself, but which interlock with elements of the trade mark.[40] The French 'OUI' may be protectable on its own, although in combination with other elements - for example 'I say OIU' - it is understood solely in terms of advertising.[41]
Overall, the assessment of the overall impression is essentially a matter for the court of fact.[42]
Footnotes
GC T-12/04 of 30.11.2005 Almdudler, ref. 42 ff. on not taking into account the coloured content of a bottle shape applied for which is not apparent from the application.
↩CJEU C-468/01 P to C-472/01 P of 29 April 2004 Three dimensional tablet shape II, ref. 44; CJEU C-473/01 P and C-474/01 P of 29 April 2004 Three dimensional tablet shape III, ref. 44; CJEU C-136/02 P of 7.10.2004 Mag Instrument, ref. 20; CJEU C-286/04 P of 30.6.2005 Eurocermex, ref. 22; CJEU C-144/06 P of 4.10. 2007 Red and white rectangular tablet with a blue oval centre, ref. 39; CJEU C-238/06 P of 25 October 2007 Develey, ref. 82; CJEU C-304/06 P of 8 May 2008 Eurohypo, ref. 41; CJEU C-445/13 P of 7 May 2015 Voss of Norway, ref. 105; CJEU C-520/17 P of 30 November 2017 X-cen-tek, ref. 6. f.; BGH I ZB 29/13 of 15 May 2014 DüsseldorfCongress, ref. 9, with further references. N.; BGH I ZB 64/13 of 22 May 2014 ECR-Award, ref. 10; in the context of the collision case, for example: CJEU C-51/09 P of 24 June 2010 Barbara Becker, ref. 33.
↩GC T-91/01 of 5 December 2002 BioID, ref. 36.
↩CJEU C-383/99 P of 20 September 2001 Baby-dry, ref. 40; CJEU C-363/99 of 12 February 2004 Postkantoor, ref. 96; CJEU C-265/00 of 12 February 2004 Campina Melkunie, ref. 37; CJEU C-329/02 P of 16 September 2004 SAT.2, para. 28; CJEU C-273/05 P of 19 April 2007 OHIM/Celltech, para. 76; CJEU C-304/06 P of 8 May 2008 Eurohypo, para. 41; CJEU C-17/08 P of 6 February 2009 MPDV Mikrolab, para. 38; CJEU C-92/10 P of 13 January 2011 Media-Saturn-Holding, para. 36; GC C-70/13 P of 12 December 2013 Getty Images, para. 24; GC C-622/13 P of 30 April 2015 Castel Frères, para. 70; also GC T-34/00 of 27 February 2002 EUROCOOL, para. 43; BGH I ZB 39/09 of 10 June 2010 letter T with dash, para. 10.
↩CJEU C-304/06 P of 8 May 2008 Eurohypo, ref. 41; CJEU C-622/13 P of 30 April 2015 Castel Frères, ref. 70; CJEU C-445/13 P of 7 May 2015 Voss of Norway, ref. 124; BGH I ZB 43/15 of 9 November 2016 Stadtwerke, ref. 9 November 2016 Stadtwerke Bremen, ref. 32; for the reverse case, that only the combination makes the sign not protectable: GC T-256/06 of 5 November 2008 HONEYCOMB, ref. 37.
↩CJEU C-383/99 P of 20 September 2001 Baby-dry, ref. 44; see also CJEU T-344/07 of 10 February 2010 Homezone, ref. 28 ff.
↩As rightly stated in the Opinion of Advocate General Jacobs of 19 February 2004 in CJEU C-498/01 P New Born Baby, which led to the withdrawal of the trade mark application; see also CJEU T-140/00 of 3 October 2001 New Born Baby, ref. 24 ff.
↩GC T-461/04 of 20 September 2007 PURE DIGITAL, ref. 27 ff. and 55 ff., confirmed in conclusion by CJEU C-542/07 P of 11 June 2009 Imagination Technologies.
↩GC T-304/06 of 9 July 2008 Mozart, ref. 94 ff.
↩GC T-656/17 of 7 February 2017 Compal FRUTA essencial/Dr. Jacob's essentials, ref. 34 f.
↩BGH I ZB 39/09 of 10 June 2010 letter T with dash, ref. 11 ff.
↩However, the overall impression can also be taken into account immediately: CJEU C-273/05 P of 19 April 2007 OHIM v Celltech, ref. 80.
↩CJEU C-468/01 P to C-472/01 P of 29 April 2004 Three dimensional tablet shape II, ref. 45; CJEU C-473/01 P and C-474/01 P of 29 April 2004 Three dimensional tablet shape III, ref. 45; CJEU C-329/02 P of 16 September 2004 SAT.2, ref. 28; CJEU C-286/04 P of 30 June 2005 Eurocermex, ref. 23; CJEU C-37/03 P of 15 September 2005 BioID, ref. 29 and 31; CJEU C-144/06 P of 4 October 2007 Red and white rectangular tablet with a blue oval centre, ref. 39; CJEU C-238/06 P of 25.10.2007 Develey, ref. 82; GC C-90/11 and C-91/11 of 15.3.2012 Strigl, ref. 23; GC C-445/13 P of 7.5.2015 Voss of Norway, ref. 106; GC T-79/01 and T-86/01 of 20.11.2002 Kit Pro and Kit Super Pro, ref. 22.
↩CJEU C-329/02 P of 16.9.2004 SAT.2, ref. 28 ff.; CJEU C-286/04 P of 30.6.2005 Eurocermex, ref. 26; CJEU C-37/03 P of 15.9.2005 BioID, ref. 29; also CJEU C-273/05 P of 19.4.2007 OHIM/Celltech, ref. 79.
↩GC C-363/99 v 12.2.2004 Postkantoor, ref. 98; GC C-265/00 v 12.2.2004 Campina Melkunie, ref. 39; GC C-273/05 P v 19.4.2007 OHIM/Celltech, ref. 77; see also CJEU T-323/00 v 2.7.2002 SAT.2, ref. 49 (annulled by GC C-329/02 P of 16 September 2004 SAT.2); GC T-79/01 and T-86/01 of 20 November 2002 Kit Pro and Kit Super Pro, ref. 29; GC T-91/01 of 5 December 2002 BioID, ref. 42.
↩GC T-331/99 of 31 January 2001 Giroform, para. 24 f., with reference to GC T-163/98 of 8 July 1999 BABY-DRY, para. 27; GC T-19/99 of 12 January 2000 Companyline, para. 26.
↩CJEU C-304/06 P of 8 May 2008 Eurohypo, ref. 42 ff.
↩GC T-106/00 of 27 February 2002 STREAMSERVE, paras. 44 and 49, confirmed in conclusion by GC C-150/02 P of 5 February 2004 Streamserve, para. 31.
↩GC T-204/04 of 15 February 2007 HAIRTRANSFER, ref. 31 ff.
↩GC T-330/06 of 10 June 2008 BLUE SOFT, ref. 45 ff.
↩GC T-357/99 and T-358/99 of 14 June 2001 UNIVERSALTELEFONBUCH/UNIVERSALKOMMUNIKATIONSVERZEICHNIS, para. 33, confirmed in conclusion by CJEU C-326/01 P of 5 February 2004 Universaltelefonbuch/Universalkommunikationsverzeichnis, para. 30.
↩GC T-230/05 of 6 March 2007 GOLF USA, ref. 36 ff.
↩CJEU C-629/17 of 6 December 2018 J. Portugal Ramos Vinhos, ref. 22 ff.
↩CJEU C-90/11 and C-91/11 of 15 March 2012 Strigl, ref. 25 et seq.; on this also CJEU C-20/14 of 22 October 2015 BGW Beratungs-Gesellschaft Wirtschaft, ref. 29 et seq.
↩CJEU C-363/99 of 12 February 2004 Postkantoor, paras. 99 and 104; CJEU C-265/00 of 12 February 2004 Campina Melkunie, para. 43; see also CJEU C-273/05 P of 19 April 2007 OHIM/Celltech, para. 78 f. GC C-304/06 P of 8 May 2008 Eurohypo, para. 61; GC C-408/08 P of 25 February 2010 Lancôme, para. 62; GC C-622/13 P of 30 April 2015 Castel Frères, para. 71; CJEU T-323/00 of 2 July 2002 SAT.2, para. 49 (annulled by GC C-329/02 P of 16 September 2004 SAT.2); GC T-79/01 and T-86/01 of 20 November 2002 Kit Pro and Kit Super Pro, para. 22; GC T-91/01 of 5 December 2002 BioID, para. 27; GC T-122/01 of 3 July 2003 Best Buy, para. 27.
↩GC C-104/00 P of 19 September 2002 Companyline, ref. 21 and 23; see also GC T-439/04 of 3 May 2006 EUROHYPO, ref. 54 f., confirmed by GC C-304/06 P of 8 May 2008 Eurohypo; GC T-160/07 of 8 July 2008 COLOR EDITION, ref. 47 ff., confirmed by GC C-408/08 P of 25 February 2010 Lancôme; GC C-295/15 P of 22 June 2016 Matratzen Concord, ref. 40 ff.
↩GC T-343/07 of 25 March 2009 ALLSAFE, ref. 19 ff.
↩BGH I ZB 78/10 of 22 June 2011 Rheinpark-Center Neuss, ref. 12; also BGH I ZB 83/10 of 22 June 2011, ref. 12.
↩GC T-564/08 of 4 March 2010 SUDOKU SAMURAI BINGO, ref. 25 ff.
↩CJEU C-329/02 P of 16 September 2004 SAT.2, ref. 30 ff., against GC T-323/00 of 2 July 2002 SAT.2.; but see on the meaninglessness of dots within a sign Joint Communication on the Common Practice on Distinctiveness - Word/figurative marks with descriptive/non-distinctive words of 2 October 2015 (tmdn.org/network/documents/10181/f939b785-df77-4b67-ba43-623aa0e81ffb); GC T-163/16 of 18 May 2017 secret.service., ref. 58 ff.
↩BGH GRUR 2002, 261, 262 AC; see also GC T-312/03 of 14 July 2005 Selenium Spezial A-C-E/SELENIUM-ACE, ref. 36; on letter combinations also GC T-117/03 to T-119/03 and T-171/03 of 6 October 2004 NL, ref. 48.
↩GC T-248/05 of 24 September 2008 I. T.@MANPOWER, ref. 50 ff., confirmed by CJEU C-520/08 P of 24 September 2009 HUP Uslugi Polska.
↩GC T-402/16 of 20 September 2017 berlinGas, confirmed by CJEU C-656/17 P of 31 May 2018 Berliner Stadtwerke, ref. 5 f.
↩BGH GRUR 1995, 269, 270 U-KEY; BGH GRUR 1995, 408, 409 PROTECH; BGH GRUR 1999, 1089, 1091 YES; BGH GRUR 1999, 1093, 1094 FOR YOU; BGH GRUR 2000, 231 FÜNFER; BGH GRUR 2000, 323, 324 Partner with the Best; BGH GRUR 2000, 502, 503 St. Pauli Girl; BGH GRUR 2001, 162, 163 RATIONAL SOFTWARE CORPORATION; BGH GRUR 2001, 416, 417 OMEGA; BGH GRUR 2001, 418, 419 f. Montre; BGH GRUR 2002, 261, 262 AC; BGH GRUR 2002, 816, 817 BONUS II; BGH GRUR 2002, 884, 885 B-2 alloy; BGH I ZB 56/09 of 21.12.2011 Link economy, ref. 12; BGH I ZB 64/13 of 22.5. 2014 ECR-Award, ref. 9; BGH I ZB 39/15 of 31 May 2016 OUI, ref. 18; BGH I ZB 97/16 of 5 October 2017 Pippi Longstocking trade mark, ref. 15; BGH I ZB 25/17 of 13 September 2018 Pippi Longstocking, ref. 14.
↩BGH GRUR 1995, 408, 409 PROTECH; but see GC T-178/03 and T-179/03 of 8 September 2005 DigiFilm/DigiFilmMaker, para. 30 ff.; GC T-405/04 of 23 October 2007 Caipi, para. 33 ff.; GC T-166/06 of 29 September 2008 POWDERMED, para. 24 ff.
↩See GC C-383/99 P of 20 September 2001 Baby-dry, ref. 43 ff.; GC T-270/06 of 12 November 2008 Roter Lego-Stein, ref. 73 ff., confirmed in conclusion by GC C-48/09 P of 14 September 2010 Lego Juris; BGH GRUR 1997, 627, 628 à la Carte; BGH GRUR 2002, 64, 65 INDIVIDUELLE.
↩GC T-163/98 of 8 July 1999 BABY-DRY, ref. 25.
↩BGH GRUR 1997, 627, 628 à la Carte.
↩GC T-270/06 of 12 November 2008 Roter Lego-Stein, ref. 75, confirmed in conclusion by CJEU C-48/09 P of 14 September 2010 Lego Juris.
↩BGH I ZB 39/15 of 31 May 2016 OUI, ref. 22 ff.
↩BGH I ZR 161/13 of 5 March 2015 IPS/ISP, ref. 27; BGH I ZB 16/14 of 9 July 2015 BSA/DSA DEUTSCHE SPORTAKADEMIE, ref. 13; BGH I ZB 105/16 of 18 October 2017 Square chocolate bar packaging I, ref. 48; I ZB 106/16 of 18 October 2017, ref. 48.
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