The perception of the public can change over time.
For example, the term 'Internet' was largely unknown in 1980 and would therefore possibly still have been eligible for protection in the telecommunications and IT sector. Similarly, the term 'Smartbook' was still unknown in 2002 and therefore registrable,[1] but no longer so in 2009.[2]
In the case of the EU trade mark, the date of application for registration of the contested trade mark is decisive - even in invalidity proceedings[3] for cancellation under Article 59 EUTMR or in counterclaims[4] under Article 128 EUTMR.[5] In principle, the same also applies if the trade mark is to be registered on the basis of obtaining[6] a distinctive character through use.[7]
However, in the case of obtaining a distinctive character through use, use after the date of registration can also be taken into account in EU trade mark invalidity proceedings, so that it is sufficient if the trade mark has acquired distinctive character at the time the application for invalidity is filed.[8] The same should apply respectively - court decisions in this regard are not yet available - to the revocation of a trade mark under Art. 58 EUTMR, where the wording already refers to a date after the trade mark application was filed.[9] In any case, however, circumstances after the relevant date can also be taken into account, which allow conclusions to be drawn about the factual situation on the reference date.[10]
However, it is going too far to draw conclusions about the year 2002 from a market survey conducted in 2010 on the meaning of the term 'Smartbook' if the term was not even used at that time.[11] Even a single piece of evidence on the Internet for an abbreviation from the period four years after the trade mark application was filed is not sufficient.[12]
Contrary to earlier case law of the Federal Court of Justice[13], the protectability of the trade mark on the date of filing is now also decisive for the German trade mark.[14] This also applies to invalidity proceedings, where the trade mark must also be subject to cancellation at the time of the decision.[15] In cases of doubt, the trade mark may not be cancelled.[16] Since the perception of the public can change over time, previous registrations in particular are irrelevant for the applicant.[17] However, if the trade mark only becomes eligible for protection after the application has been filed in the course of the registration procedure - for example as a result of extensive use due to a change in the perception of the public - it will be registered. However, the priority date is then not the date of application, but the date on which the sign became eligible for protection.[18]
If, for example, a trade mark is applied for on 13 June 2002, but only becomes eligible for protection on 1 March 2004 and the application procedure continues beyond this date, the GC will not allow the trade mark to be registered; the EUTMR does not recognise a deferral of priority. In contrast, the BGH would allow the trade mark to be registered with a priority date of 1 March 2004.
A special rule applies, however, to the ground for refusal of registration of the descriptive indication, as even signs whose descriptive use can reasonably be expected in the future are not registrable. This opens up far-reaching possibilities for case law to retroactively determine that a descriptive use was already to be expected at the time of registration.
Therefore, even if, for example, a wellness application with a descriptive meaning of the term 'SPA' was not yet known in 2003, a trade mark 'SPA' registered in 2000 can be cancelled on the grounds that a descriptive use of the term was already to be expected at that time.[19] However, if a later[20] descriptive use was initiated by the applicant himself, no conclusions can be drawn from this.[21]
Finally, another special rule applies to the ground for refusal of registration of a trade mark application in bad faith. Since this ground for refusal involves an assessment of the applicant's motivation at the time of the application, only this point in time is relevant.[22] However, it may be possible to draw conclusions from the applicant's behaviour in the period after the application.
Footnotes
BGH I ZB 57/12 of 6 November 2013, ref. 15 ff.; BGH I ZB 59/12 of 6 November 2013 Smartbook, ref. 19 ff.
↩GC T-123/12 of 11 December 2013 SMARTBOOK.
↩See below Section 28.3.
↩BGH I ZR 101/15 of 3 November 2016 MICRO COTTON, ref. 47; on the relationship between infringement action and counterclaim also CJEU C-425/16 of 16 October 2017 Hansruedi Raimund.
↩CJEU C-192/03 P of 5 October 2004 BSS, ref. 40; CJEU C-542/07 P of 11 June 2009 Imagination Technologies, ref. 42 ff. [for obtaining a distinctive character through use]; CJEU C-78/09 P of 24.9.2009 Compagnie des bateaux muches, ref. 18; still open in CJEU C-456/01 P and C-457/01 P of 29.4.2004 Three-dimensional tablet shape I, ref. 63 f.; CJEU C-468/01 P to C-472/01 P of 29.4.2004 Three-dimensional tablet shape II, ref. 59 f.; CJEU C-473/01 P and C-474/01 P of 29 April 2004 Three dimensional tablet shape III, para. 59 f.; CJEU C-104/01 of 6 May 2003 Libertel, para. 58; CJEU C-332/09 P of 23 April 2010 OHIM/Frosch Touristik, para. 49 ff.; CJEU C-337/12 P of 6 March 2014 Pi-Design and others, para. 59; GC C-326/18 P of 4 October 2018 Safe Skies, para. 5 f.; see also GC C-363/99 of 12 February 2004 Postkantoor, para. 36; GC T-128/01 of 6 March 2003 Kühlergrill, para. 41; GC T-189/07 of 3 June 2009 FLUGBÖRSE, paras. 18 and 26 [also after reopening pursuant to Art. 40 I CDR], confirmed in conclusion by CJEU C-332/09 P of 23 April 2010 OHIM/Frosch Touristik; also with regard to the applicable legislation CJEU C-371/18 of 29 January 2020 Sky, ref. 49; CJEU C-456/19 of 8 October 2020 Aktiebolaget Östgötatrafiken, ref. 28; differentiating v. Mühlendahl, FS Pagenberg, 2006, 159 ff.
↩See below Section 4.4.4.
↩GC C-326/18 P of 4 October 2018 Safe Skies, para. 5 ff.; GC T-247/01 of 12 December 2002 ECOPY, para. 36 ff.; GC T-16/02 of 3 December 2003 TDI I, para. 54; GC T-399/02 of 29 April 2004 Bottle with a slice of lime, para. 45; GC T-262/04 of 15 December 2005 BIC Lighter I, ref. 66; GC T-263/04 of 15 December 2005 BIC Lighter II, ref. 66; GC T-164/06 of 12 September 2007 BASICS, ref. 48; GC T-461/04 of 20 September 2007 PURE DIGITAL, ref. 76 ff, confirmed in conclusion by GC C-542/07 P of 11 June 2009 Imagination Technologies; GC T-71/06 of 15 November 2007 Shape of the nacelle cladding of a wind energy converter, para. 43, confirmed in conclusion by GC C-20/08 P of 9 December 2008 Enercon; GC T-289/08 of 11 February 2010 Deutsche BKK, para. 64; in this regard, see also GC T-237/01 of 5 March 2003 BSS, paras. 47 and 53.
↩GC T-405/05 of 15 October 2008 MANPOWER, ref. 126 f. and 146, with reference to the ambiguity of the German language version of Art. 59 II EUTMR, confirmed in conclusion by CJEU C-553/08 P of 2 December 2009 Powerserv Personalservice.
↩See Israiloff, ÖBl 2008, 62.
↩CJEU C-192/03 P of 5 October 2004 BSS, para. 41, with reference to CJEU C-259/02 of 27 January 2004 La Mer, para. 31; also CJEU C-332/09 P of 23 April 2010 OHIM/Frosch Touristik, para. 41 ff.; CJEU C-337/12 P of 6 March 2014 Pi-Design and Others, para. 60; GC C-326/18 P of 4 October 2018 Safe Skies, para. 5 f.; GC T-405/05 of 15 October 2008 MANPOWER, para. 146, unaffected by GC C-553/08 P of 2 December 2009 Powerserv Personalservice; GC T-189/07 of 3 June 2009 FLUGBÖRSE, para. 19.
↩BGH I ZB 59/12 of 6 November 2013 Smartbook, ref. 26; see also BGH I ZB 61/13 of 23 October 2014 Langenscheidt-Gelb; for evidence of past facts also GC T-137/08 of 28 October 2009 Grün, Gelb, ref. 76 f., appeal to CJEU C-553/09 P withdrawn due to settlement of the parties.
↩GC T-207/17 of 24 April 2018 hp, ref. 31; GC T-208/17 of 24 April 2018 HP, ref. 31.
↩Eligibility for protection both upon application and upon registration: BGH I ZB 30/06 of 15 January 2009 STREETBALL, ref. 14.
↩BGH I ZB 71/12 of 18 April 2013 Turning files into facts; I ZB 72/12 of 18 April 2013; I ZB 59/12 of 6 November 2013 Smartbook, ref. 10; BGH I ZB 18/13 of 10 July 2014 Gute Laune Drops, ref. 10; BGH I ZB 52/15 of 21 July 2016 Sparkassen-Rot, ref. 22.
↩BGH I ZB 71/12 of 18 April 2013 Aus Akten werden Fakten; I ZB 72/12 of 18 April 2013; I ZB 65/12 of 17 October 2013 test, ref. 22; BGH I ZB 52/15 of 21 July 2016 Sparkassen-Rot, ref. 22; BGH I ZB 39/16 of 6 April 2017 Schokoladenstäbchen III, ref. 13; BGH I ZB 97/16 of 5 October 2017 Pippi-Langstrumpf-Marke, ref. 9; BGH I ZB 105/16 of 18 October 2017 Quadratische Tafelschokoladenverpackung I, ref. 30; BGH I ZB 106/16 of 18 October 2017, ref. 30; BGH I ZB 3/17 of 18 October 2017 Traubenzuckertäfelchen, ref. 7; BGH I ZB 4/17 of 18 October 2017, ref. 2017, ref. 7; BGH I ZB 25/17 of 13.9.2018 Pippi Langstrumpf, ref. 11; BGH I ZB 42/19 of 23.7.2020 Quadratische Tafelschokoladenverpackung II, ref. 24; BGH I ZB 43/19 of 23.7.2020, ref. 24.
↩BGH I ZB 59/12 of 6 November 2013 Smartbook.
↩BGH I ZB 30/06 of 15 January 2009 STREETBALL, ref. 14; also BGH I ZB 70/10 of 17 August 2011 Institut der Norddeutschen Wirtschaft e. V., ref. 18; BGH I ZB 68/17 of 9 May 2018 Standbeutel, ref. 22.
↩Thus, Section 37 II MarkenG now expressly refers to the grounds for refusal in Section 8 II Nos. 1, 2 and 3 MarkenG; on the complaint in appeal proceedings BGH I ZB 34/04 of 15 December 2005 Porsche 911, ref. 7 ff.; on the WZG BGH GRUR 1993, 744, 745 MICRO CHANNEL; on special features in nullity proceedings BGHZ 42, 151 Rippenstreckmetall II; BGHZ 156, 112, 118 ff. Kinder I; on priority shifting pursuant to Section 156 III MarkenG, see BGH GRUR 2000, 892 MTS; on this also CJEU C-217/13 of 19 June 2014 Oberbank, ref. 50 ff., where, however, it is assumed - probably erroneously - that Art. 4 V TMD has not been implemented.
↩BGH I ZB 53/05 of 13 March 2008 SPA II, ref. 26; but see also GC T-109/07 of 25 March 2009 SPA/SPA THERAPY, ref. 24 ff. [normal distinctiveness in the cosmetics sector].
↩Different in the case of earlier use: GC T-278/09 of 15 November 2012 GG, ref. 55.
↩BGH I ZB 59/12 of 6 November 2013 Smartbook, ref. 32.
↩BGH I ZB 96/05 of 27 April 2006 FUSSBALL WM 2006, ref. 42; I ZB 97/05 of 27 April 2006, ref. 42.
↩