Eligibility for protection often becomes problematic if registration is sought for a group of products under a broad generic term.
If, for example, an application is filed for the name 'gin' in general for the broad generic term 'alcoholic beverages', it must be assumed that it is not protectable, as alcoholic beverages also include gin. If, on the other hand, the application is limited to the narrow term 'wines', the sign may be eligible for protection under certain circumstances. The word 'TEK' used in France and Italy for teak wood is descriptive even for shelves that are not made of wood, as other materials can in any case be an imitation of teak wood.^[1]
In the case of broad generic terms, German case law expressly differentiates, and the CJEU probably also does so, depending on the direction of protection of the respective ground for refusal. A trade mark registration for a broad generic term for a product could also confer exclusive rights for those products in respect of which a ground for refusal applies. Therefore, if the ground for refusal is intended to prevent monopolisation, it is sufficient for refusal if the trade mark is not capable of being protected for some of the products.^[2] If, on the other hand, the ground for refusal serves to prevent the use of an undesirable sign, there is no reason to prohibit the sign as long as use would be permissible for some of the products under the claimed generic term.^[3] Since permissible uses then exist,^[4] a prohibition of the sign should be dispensable.
A trade mark consisting of the word 'trousers' must therefore be refused if protection is claimed for the generic term 'clothing', which also includes trousers. In contrast, a trade mark 'OMEPRAZOK', which is based on the active pharmaceutical ingredient 'omeprazole' used as an ulcer remedy, is in any case eligible for protection if general protection is claimed for the generic term 'pharmaceuticals'. Although the sign may be misleading in connection with other medicinal products, it can in any case be used for ulcer remedies and thus for certain medicinal products without being misleading.^[5]
Fundamentally, the case law practice of the BPatG and GC differs in how to communicate with the applicant in the event of an overly broad generic term in the list of goods and services. The BpatGBPatG often enters into a dialogue with the applicant during oral proceedings - without any obligation to do so, respectively^[6] - and occasionally even suggests a restriction of the list^[7]. In contrast, the GC is restrictive even with auxiliary requests by the applicant and treats them as an inadmissible attempt to amend the subject matter of the dispute.^[8] Therefore, if an attempt at limitation is to be successful before the GC, the unconditional limitation must be made vis-à-vis the EUIPO and this must be communicated to the GC;^[9] during ongoing opposition proceedings, the Opposition Division is responsible for the limitation, in appeal proceedings the Board of Appeal;^[10] under certain circumstances, a partial withdrawal of the action may also fulfil this purpose;^[11] the limitation must not result in an amendment, but only a limitation of the subject matter of the dispute.^[12]
If, for example, a trade mark originally registered for 'financial and monetary transactions' is restricted by removing 'monetary transactions' completely from the list and 'financial' is specified by adding 'namely electronic and paper-based banking services, all relating to systems with different currencies, to the extent included in Class 36', this will lead to different results before the BpatGBPatG and GC: The BpatGBPatG takes both amendments into account without further ado. In contrast, the GC considers the concretising addition to the term 'financial system' to be an inadmissible change to the subject matter of the dispute. Only the deletion of the term 'monetary transactions' is also admissible before the GC as a limitation of the subject-matter of the dispute.^[13] However, the GC will allow the addition of concretising additions if, in fact, only the partial annulment of the contested decision is sought as a result.^[14]