If a trade mark has been registered for certain products, this has no influence on the examination in the case of a new application for similar products. Rather, the examination must always be based on the goods or services specifically mentioned in the application for registration.^[1] This applies regardless of whether an auxiliary request for a partial registration has also been filed.^[2]
The fact that a trade mark such as 'CARCARD' is registered for certain IT and telecommunications products does not mean that the trade mark can also be protected for specific card-related or vehicle-related products. Rather, the public may see the sign as an indication of destination due to its meaning ('car map').^[3]
The protectability must be assessed for each product individually. There are no products that are subordinate to or accessory to others and could therefore be neglected in the examination.^[4] Only if a reason for refusal applies equally to an entire product group,^[5] the Office may use a uniform statement of reasons for all products in the group.^[6] The fact that products are in one and the same class of the Nice Classification is not sufficient in any case to justify a blanket assessment of these products together.^[7] Rather, the goods and services must be so directly and specifically related that they form a sufficiently homogeneous category or group of goods or services.^[8] In doing so, the specific product characteristics must be taken into account.^[9]
For example, the term 'ELLOS' is descriptive of 'clothing' in Spain because there the word 'ELLOS' as a male personal pronoun can indicate that these goods are intended for a male clientele. However, even if the clothing is sold by mail order, this does not mean that the service 'customer service in the field of mail order' cannot be protected, where the gender of the customers is irrelevant.^[10] Similarly, the term 'Intelligent Voltage Guard' is descriptive of various electrical or electronic devices for operating lighting devices or for devices that serve to operate such devices.^[11] 'SURFCARD' is descriptive for products where surfing the Internet using a card may play a role, but not for data carriers or credit card services.^[12] 'EASYCOVER' describes building materials and floor coverings, but not monuments.^[13] The abbreviation 'IFS' (independent front suspension) is an abbreviation used in the automotive industry to describe a mechanism that allows the wheels to be moved independently of each other; however, this does not mean that the abbreviation can also be used to describe steering systems.^[14] 'ULTIMATE FIGHTING' may be descriptive for products that have a direct connection to martial arts, but not for any merchandising products that may be sold at martial arts events.^[15] Furthermore, the term 'REICH UND SCHÖN' was descriptive of television entertainment and production, where it could be related to the content of the programmes, but not for the auxiliary services of film distribution or rental.^[16] The term 'EURO 2000', used generally for the 2000 European Football Championship, may also lack any distinctive character for footballs; the public may understand the term used on footballs as an indication of destination in the sense of a match or training ball for the sporting event.^[17] The designation 'Lokmaus' is descriptive for products in connection with the control of model railway layouts and other toys, but not for the service 'software development'.^[18] The portrait of a well-known person is not distinctive enough for such products, where the public makes a thematic or other factual reference to the depicted person,^[19] a three-dimensional mark for the depicted product, but not automatically for other products.^[20] The trade mark 'Neuschwanstein' is sufficiently distinctive for products such as pharmaceutical products, telecommunications or finance because it is not sufficient for these products to be offered as an additional service in the vicinity of tourist attractions;^[21] however, the GC's^[22] intention to affirm protectability for typical souvenirs goes too far. Finally, the word mark 'My World' is devoid of distinctive character for a variety of goods in Class 16 (e.g. printed matter, magazines, books, posters) and for a range of services in class 41 (such as publication and issuing of printed material, sound and television studio services, production of television and radio programmes), but not for advertising services.^[23] 'test' is not protectable for product testing, but it is for information services on legal and tax issues.^[24]
In exceptional cases, all claimed products can be uniformly examined, if they all have the same characteristics that lead to unprotectability.
This applies, for example, to the trade mark 'Deluxe', which is claimed for a variety of different products, but which can all equally exhibit luxury character.^[25]
Against this background, a decision practice that a trade mark not being protectable for certain products may under certain circumstances affect the assessment of other products may occasionally go too far. The decisive factor here is whether the respective products are inseparably linked. In some circumstances, it may even be sufficient if - due to the complexity of the products concerned - the office is unable to make a distinction.^[26]
If, for example, the phrase 'LOOKS LIKE GRASS. . . FEELS LIKE GRASS. . . PLAYS LIKE GRASS' describes the properties of artificial turf and is not protectable for artificial turf, this will carry over to services involving the laying of artificial turf. The purpose of the services can only be the laying of the goods, so that there is an inseparable connection between the goods and the related service.^[27] The trade mark 'HAIRTRANSFER' is also said to be not only descriptive of products in connection with hair transplants, but also of further training events as an indication of their content.^[28] Finally, the trade mark 'manufacturing score card' can not only designate software that serves as a counting card in companies, but is also a descriptive indication of the result of management consultancy or technical consultancy services.^[29] The term 'Patentconsult', composed of the terms 'patent' and 'consult' (= consulting) is not only descriptive of the services of a patent attorney, but also of management consulting, training and further education, as well as translation services, since all of these services may be closely related to patent law consulting.^[30] 'GIROPAY', as an indication for cashless payment transactions, describes not only financial services, but also data processing equipment and programs, since these can be used to process payment transactions.^[31] Finally, the illustration of a common book cover is not protectable for sheets of paper either, because there is a close connection to bound books.^[32] By contrast - and contrary to the GC^[33] - the shape of the head of a guitar is not devoid of distinctive character for amplifiers or speaker cabinets. Furthermore, although 'DüsseldorfCongress' is descriptive for congresses, it is not automatically descriptive for computer services.^[34]