The authority responsible for the registration of trade marks or the court hearing an action against a decision on an application for registration of a trade mark must take into account all relevant facts and circumstances in addition to the trade mark as filed.^[1]
This also applies, for example, to the results of a study submitted by the applicant to prove, for example, that the trade mark is not devoid of distinctive character or that it is not misleading.
According to the twelfth recital in the preamble to the TMD (2008), the TMD is to be interpreted in the sense of the Paris Convention; nothing else will apply to the current TMD as a continuous update of the law. However, according to Art. 6quinquiesC I Paris Convention, when assessing the protectability of a trade mark, all circumstances of the case must be taken into account, in particular the duration of use of the trade mark.^[2]
For example, when examining the distinctiveness of a trade mark, it must be taken into account whether and to what extent the applicant has already used the trade mark and the public has thus become accustomed to distinguishing the products of one undertaking from those of another undertaking by means of the sign.^[3] This applies in any case if the applicant relies on distinctiveness acquired through use when filing the application.
In practice, internet searches are becoming increasingly important - especially in official proceedings.^[4] However, evidence in dictionaries can also be held against the applicant.^[5] In particular, the applicant can influence the examination procedure by submitting studies, such as market surveys, evidence of extensive use of the trade mark applied for or linguistic expert opinions. Particularly if the trade mark is aimed at specialist circles, specialist dictionaries may be relevant.^[6] Obtaining an expert opinion is also not excluded.^[7] Finally, even evidence from sources outside the relevant territory may provide indications of the perception of the public in the relevant territory.^[8]
The Office must prove the relevant facts. Referring to sources such as Wikipedia, whose content can change at any time, is problematic.^[9] If, for example, a trade mark 'CELLTECH' is to be refused on the grounds that the term is descriptive, the respective meaning of the term must be proven - for example by referring to the specialist literature.^[10] If the Office wants to refuse trade marks such as 'Limbic® Map', it must prove that maps of the limbic system exist or that such maps can at least reasonably be expected.^[11] It is not sufficient to refer to a single reference on the internet.^[12] Similarly, it is not sufficient to cite only dictionary entries to prove the meaning of a foreign-language term rather than original references to that language.^[13]
Particular problems arise in the case of internationally used languages, especially English. In this respect, non-European evidence can be taken into account when certain linguistic phenomena are involved. However, caution must be exercised when taking non-European evidence into account if specific market practices are to be proven.^[14]
According to the case law of the CJEU, Art. 4 TMD requires a detailed and global examination of the grounds for refusal. The provision is contrary to the practice of an authority responsible for the registration of trade marks, which consists of refusing to register only 'manifestly unlawful' trade marks.^[15] The examination of the grounds for refusal listed in particular in Art. 4 TMD, which is carried out when the application for registration is filed, must be thorough and global in order to prevent trade marks from being wrongly registered.^[16] Conversely, certain categories of trade marks should not be rejected across the board and without a specific examination.^[17] The examination should be strict^[18] in order to prevent the unjustified registration of trade marks.^[19] Mere presumptions are not sufficient.^[20]
Against this background, however, Section 37 III MarkenG is likely to be contrary to the Directive.^[21] This provision restricts the scope of the registration procedure. This provision restricts the rejection of deceptive trade marks within the meaning of Art. 4 I lit. g TMD in the registration procedure to signs which are clearly capable of deceiving. The provision should therefore be interpreted in conformity with the Directive to the effect that the restriction to obvious deceptiveness does not exempt the authority from the detailed and global examination required by the CJEU.