Often, the perception of the public is not uniform, but there are different consumer groups with different understandings of the trade mark (so-called divided perception of the public).[1] However, for legal reasons, a uniform perception of the public must generally be assumed. A different assessment is only justified in exceptional cases if different publics are addressed, which - such as the general public and specialist circles or different linguistic circles - can be objectively distinguished from each other.[2]
However, it may be sufficient for a trade mark to be rejected if the trade mark is only not protectable for relevant parts of the public. It is therefore sufficient, for example, for the trade mark 'Hallux' (= abbreviation for a pathological crooked position of the big toe) applied for shoes to be refused if people suffering from this disease recognise the meaning of the word.[3] A term borrowed from youth language, such as 'XOXO' in the sense of 'hugs and kisses', may also be not protectable because young people represent a non-negligible part of the public.[4]
A divided perception of the public exists, first of all, if a trade mark is aimed at both specialist circles and the general public.[5] Specialist circles will often have specialised knowledge. However, it has not yet been conclusively clarified when specialised knowledge of small parts of the public addressed is to be taken into account.
If, for example, the name 'GARUM', the name of an ancient Roman spice, is registered for food, individual specialised restaurateurs may know the name; this does not necessarily mean that a trade mark 'GARUM', which is also aimed at the general public, is not protectable.[6] However, if the majority of specialised circles recognise the descriptive meaning of the term 'PrimeCast' (= first-class casting mould) for casting moulds, the trade mark is not protectable even if smaller parts of the public are unaware of the meaning.[7]
Another group of cases of divided perception of the public are foreign-language trade mark words[8] if only parts of the public have knowledge of the foreign language in question. When assessing the language skills of consumers in the EU, representative studies such as the Eurobarometer[9] can be used in particular, but the knowledge of foreign languages of domestic consumers - especially English,[10] to a lesser extent also French,[11] Spanish,[12] Italian, Russian,[13] and even Latin,[14] but probably not Esperanto[15] - must be taken into account. Moreover, it is sufficient for the public to be able to recognise the meaning of a word. In particular, specialised circles in various industries have a knowledge of English.[16] Active knowledge is not required.[17] Echoes of German words in a foreign language may also be sufficient to be able to affirm an understanding of the domestic public.[18] It is also sufficient if the term - such as a Catalan word in Spain - only has a meaning in one part of one or more Member States.[19] Barriers to registration in official languages of the territory concerned are in any case grounds for exclusion.[20]
For example, the term 'TAVUK-SADE-SALAM', which is registered for sausage products, means something like 'pure chicken salami' in Turkish. TheBPatG rejected the application on the grounds that, although only a small and no longer relevant part of the domestic public understands the meaning of the name,[21] the name is in any case descriptive for persons involved in foreign trade with Turkey.[22] Since the CJEU also wants trade to be taken into account when assessing the registrability of a trade mark,[23] this assessment applies insofar as foreign trade is carried out to a relevant extent with the specifically claimed goods.[24]
The CJEU has not yet had the opportunity to comment on whether and under what conditions a divided perception of the public is to be assumed. In any case, the CJEU wants situations outside the actual sales situation to be taken into account when assessing the perception of the public in certain circumstances.[25]
An informative notice displayed at a sales stand, for example, may fail to have an informative effect. Consumers who encounter the goods labelled with the trade mark after they have left the stand will no longer notice the notice.[26]
Footnotes
See BGH GRUR 2004, 947 Gazoz.
↩BGH I ZR 100/11 of 27 March 2013 AMARULA/Marulablu.
↩GC T-286/08 of 16 December 2010 Hallux, ref. 55 ff., confirmed in conclusion by CJEU C-87/11 P of 21 March 2012 Fidelio.
↩GC T-503/19 of 13 May 2020 XOXO, ref. 39 et seq.
↩See, for example, BGH I ZB 52/09 of 1 June 2011 Maalox/Melox-GRY, ref. 9.
↩GC T-341/06 of 12 March 2008 GARUM, ref. 36 ff.
↩GC T-373/07 of 12 November 2008 PrimeCast, ref. 29.
↩On this point, BGH GRUR 2004, 947 Gazoz; BGH GRUR 2005, 60 Gazoz (leading sentence correction); also Kurtz, BGH GRUR 2004, 32 ff.; on the Spanish consumer's limited knowledge of English GC T-6/01 of 23 October 2002 Matratzen/Matratzen Markt Concord, ref. 27; GC T-36/07 of 25 June 2008 CICAR/ZIPCAR, ref. 45, confirmed in conclusion by CJEU C-394/08 P of 3 June 2009 Zipcar; on the special features in the Benelux area, see also CJEU C-108/05 of 7 September 2006 Bovemij Verzekeringen.
↩GC T-589/11 of 20 November 2012 PAGINE GIALLE, ref. 35 f.
↩For example, BGH GRUR 1998, 394, 396 Active Line; BGH WRP 1998, 495, 496 Today; BGH GRUR 1999, 1089 YES; BGH I ZR 93/04 of 19 July 2007 Windsor Estate, ref. 48; GC T-34/04 of 22 June 2005 POWER/Turkish Power, ref. 48; GC T-435/07 of 26 November 2008 NEW LOOK, ref. 20 ff. [on the Scandinavian countries, Finland and the Netherlands]; on Scandinavian end consumers, GC T-43/05 of 30.11.2006 BROTHERS/BROTHERS by CAMPER, ref. 55; sceptical on Dutch and Scandinavian publics, by contrast, GC T-405/05 of 15.10.2008 MANPOWER, ref. 81 et seq, confirmed in conclusion by GC C-553/08 P of 2 December 2009 Powerserv Personalservice, ref. 51 ff.; also affirmative with regard to German consumers GC T-85/19 of 12 March 2020 King/KinGirls, ref. 25 ff.; very cautious with regard to Spanish consumers GC T-333/04 and T-334/04 of 14 April 2007 DONUT/House of DONUTS, ref. 53; GC T-363/06 of 9 September 2008 SEAT/MAGIC SEAT, ref. 37; GC T-233/10 of 25 May 2012 JUMPMAN/JUMP, ref. 30 and 51 ff. GC T-210/14 of 26 February 2016 GUMMY/GUMMI Bear-Rings, ref. 52; generally cautious with regard to the term ‘foam’ GC T-172/05 of 10 October 2006 NOMAFOAM/ARMAFOAM, ref. 57, confirmed in conclusion by GC C-514/06 P of 18 September 2008 Armacell Enterprise; on Czech, Hungarian, Polish and Slovenian public [basic knowledge] GC C-328/18 P of 4 March 2020 EUIPO v Equivalenza Manufactory, ref. 97, against the previous instance GC T-6/17 of 7 March 2018 LABELL/BLACK LABELL/BLACK , ref . 2018 LABELL/BLACK LABEL BY EQUIVALENZA; on the presence of American English GC T-323/05 of 9 July 2008 THE COFFEE STORE, ref. 40; on the understanding of the younger generation: GC T-307/08 of 20 October 2009 4 OUT Living/Living & Co, ref. 30 f.; on the importance of English after Brexit: GC T-19/20 of 12 February 2021 I love, ref. 37 ff.
↩See BGH GRUR 1999, 238, 240 Tour de culture; BGH I ZB 24/05 of 21 February 2008 VISAGE, ref. 17 f.
↩See BGH GRUR 1992, 514 Olé; for the indication of the legal form ‘S. L.’ also BGH GRUR 2004, 865, 867 Mustang.
↩For the Baltic States GC T-432/16 of 19 July 2017 Bear (in Cyrillic). Ref. 23; GC T-830/16 of 13 December 2018 PLOMBIR, ref. 55 ff. [also on Germany], confirmed by CJEU C-142/19 P of 18 June 2020 Dovgan.
↩GC T-118/08 of 15 June 2010 TERRAEFFEKT matt & gloss, para. 36 ff.; GC T-312/18 of 23 May 2019 AQUACEM/AQUAPRINT, para. 30; but GC T-322/05 of 22 March 2007 terra/Terranus, para. 39, confirmed in conclusion by CJEU C-243/07 P of 15 February 2008 Brinkmann; rejecting for the Spanish consumer CJEU T-378/17 of 7 December 2018 CERVISIA AMBAR/CERVISIA, ref. 33.
↩GC T-263/18 of 5 March 2019 MEBLO, ref. 96, appeal not allowed by CJEU C-359/19 P of 10 July 2019 Meblo Trade.
↩On business people: GC T-288/03 of 25 May 2005 TELETECH INTERNATIONAL/TELETECH GLOBAL VENTURES, ref. 79; GC T-194/03 of 23 February 2006 Bridge/Bainbridge, ref. 108 f., confirmed in conclusion by GC C-234/06 P of 13 September 2007 Il Ponte Finanziaria; on the financial sector: GC T-405/07 and T-406/07 of 20 May 2009 P@YWEB CARD and PAYWEB CARD, ref. 35, confirmed in conclusion by CJEU C-282/09 P of 18 March 2010 CFCMCEE; in the field of medicine: GC T-363/10 of 15 November 2011 RESTORE, ref. 29; in the field of orthopaedics: GC T-253/13 of 12 November 2015 IRAP, ref. 35.
↩CJEU C-421/04 of 9 March 2006 Matratzen Concord/Hukla-Germany, ref. 26 and 32.
↩BGH I ZB 61/07 of 3 April 2008 SIERRA ANTIGUO, ref. 21.
↩GC T-72/11 of 13 September 2012 ESPETEC, ref. 35 ff.
↩CJEU C-108/05 of 7 September 2006 Bovemij Verzekeringen, ref. 27 f.
↩Similarly in a conflict case GC T-286/02 of 25 November 2003 MOU/KIAP MOU, ref. 41.
↩BPatG 28W(pat)233/96 of 9 July 1997; see also GC T-405/07 and T-406/07 of 20 May 2009 P@YWEB CARD and PAYWEB CARD, ref. 35, confirmed in the result by CJEU C-282/09 P of 18 March 2010 CFCMCEE; see however BGH GRUR 2004, 947 Gazoz, where the eligibility for protection is not problematised.
↩See above Section 4.3.2.1.
↩Similarly Ströbele, MarkenR 2006, 433, 434 f.
↩CJEU C-361/04 P of 12 January 2006 Picasso, ref. 44 ff.; also CJEU C-24/05 P of 22 June 2006 Storck I, ref. 71 f.
↩CJEU C-206/01 of 12 November 2002 Arsenal/Reed, ref. 57; also CJEU C-245/02 of 16 November 2004 Anheuser-Busch/Budějovický Budvar, ref. 60.
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