4.4: Distinctive character, descriptive indications, customary designations

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In practice, the most important grounds for refusal by far are those of lack of distinctive character, descriptive indications and common usage under Art. 4 I lit. b, c and d TMD, Art. 6quinquiesB No. 2 Paris Convention, Art. 7 I lit. b, c and d EUTMR and Sec. 8 II Nos. 1 to 3 MarkenG. The dogmatics of these grounds for refusal have been reorganised by the decision-making practice of the CJEU.
However, German case law and legal doctrine have only partially followed these changes. The term 'requirement of availability' (Sec. 8 II No. 2 MarkenG) and 'free sign' (Sec. 8 II No. 3 MarkenG) are often still used here.[1] However, the CJEU does not want the term 'requirement of availability' - or more accurately the 'public interest in availability' - to refer only to Sec. 8 II No. 2 MarkenG, but to various grounds for refusal.[2] These terms, which have become imprecise, must therefore be abandoned in their traditional German understanding together with the underlying outdated dogmatics.[3]
According to the case law of the CJEU, the respective grounds for refusal are independent of each other and must therefore be examined separately.[4] On the other hand, their respective areas of application overlap. In particular, a word mark that describes characteristics of products is therefore necessarily devoid of distinctive character[5]. The same applies, respectively, to the ground for refusal of customary designations.[6] A trade mark may also lack distinctive character for reasons other than its descriptive character[7] or its customary designation.[8] The grounds for refusal of descriptive indication and customary designation thus cover specific cases of lack of distinctive character without going beyond the scope of the ground for refusal of lack of distinctive character. What the three grounds for refusal also have in common is that they do not apply if the trade mark has acquired distinctive character through use (Art. 4 IV TMD, Art. 7 III EUTMR and Sec. 8 III MarkenG).
On the other hand, the CJEU does not wish to overemphasise this principle of speciality of the grounds for refusal of descriptive indications and customary designations. The principle of a separate examination of the grounds for refusal prohibits an abbreviated examination in such a way that, for example, a lack of distinctive character can be derived from a descriptive character of the trade mark. Instead, the relevant criteria for the respective ground for refusal must be examined separately in each case.
For example, the examination of the lack of distinctive character must be based primarily on whether the sign can fulfil its function of indicating the origin of products from a specific undertaking. Whether the sign is descriptive or not. The fact that the sign is descriptive is not the relevant standard of assessment here.[9]
As lex specialis, the grounds for refusal of descriptive indications (Art. 4 I lit. c TMD, Art. 7 I lit. c EUTMR or Sec. 8 II No. 2 MarkenG) and customary designations (Art. 4 I Buc hst. d TMD, Art. 7 I lit. d EUTMR or § 8 II No. 3 MarkenG) should be examined before the ground for refusal of lack of distinctive character for other reasons (Art. 4 I lit. b TMD, Art. 7 I lit. b EUTMR or § 8 II No. 1 MarkenG).[10]

Footnotes

  1. See only Ullmann, GRUR 2005, 89, 91; in contrast Hildebrandt, Newsletter CIP 2005/1; between persistence and ignorance BGH I ZB 33/04 of 15 December 2005 Porsche Boxter, ref. 15 ff.; BGH I ZB 37/04 of 24 May 2007 Fronthaube, ref. 28; I ZB 36/04 of 24 May 2007, ref. 28; I ZB 66/06 of 24 May 2007 Rado-Uhr III, ref. 12; BGH I ZB 46/05 of 3 April 2008 Käse in Blütenform II, ref. 16.

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  2. CJEU C-102/07 of 10 April 2008 adidas and adidas Benelux, ref. 23.

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  3. See CJEU C-108/97 and C-109/97 of 4 May 1999 Chiemsee, ref. 35.

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  4. CJEU C-53/01 to C-55/01 of 8.4.2003 Linde, ref. 67; CJEU C-363/99 of 12.2.2004 Postkantoor, ref. 67; CJEU C-265/00 of 12.2.2 004 Campina Melkunie, ref. 18; CJEU C-456/01 P and C-457/01 P of 29 April 2004 Three dimensional tablet shape I, ref. 45; CJEU C-329/02 P of 16 September 2004 SAT.2, para. 25; CJEU C-64/02 P of 21 October 2004 THE PRINCIPLE OF CONFIDENCE, para. 39; CJEU C-37/03 P of 15 September 2005 BioID, para. 59; CJEU C-173/04 P of 12.1.2006 Deutsche SiSi-Werke, ref. 59; CJEU C-304/06 P of 8.5.2008 Eurohypo, ref. 54; CJEU C-90/11 and C-91/11 of 15.3.2012 Strigl, ref. 20.

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  5. CJEU C-363/99 of 12 February 2004 Postkantoor, para. 86; CJEU C-265/00 of 12 February 2004 Campina Melkunie, para. 19; CJEU C-90/11 and C-91/11 of 15 March 2012 Strigl, para. 21; CJEU C-307/11 P of 26 April 2012 Deichmann, para. 46 f.; CJEU C-37/17 P of 31 May 2017 Keil, para. 4. f.; also GC T-289/02 of 8 July 2004 TELEPHARMACY SOLUTIONS, para. 24; GC T-160/02 to T-162/02 of 11 May 2005 Naipes Heraclio Fournier, para. 59, confirmed in the result by CJEU C-311/05 P of 4 October 2007 Naipes Heraclio Fournier v OHIM; GC T-439/04 of 3 May 2006 EUROHYPO, para. 42 ff. ., confirmed in the result GC C-304/06 P of 8 May 2008 Eurohypo; nothing else should apply topotentiallydescriptive signs; GC T-373/07 of 12 November 2008 PrimeCast, ref. 46; thus outdated, for example, BGH GRUR 1993, 43 Römigberg; BGH GRUR 2004, 329, 331 Käse in Blütenform I; BGH GRUR 2004, 502, 504 f. Gabelstapler II; BGH GRUR 2004, 506, 507 Stabtaschenlampen II.

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  6. CJEU C-192/03 P of 5 October 2004 BSS, para. 29; CJEU C-64/02 P of 21 October 2004 THE PRINCIPLE OF CONFIDENCE, para. 38, in each case with reference to CJEU C-517/99 of 4 October 2001 Bravo, para. 37; EFTA Court E-5/16 of 8 April 2017 Municipality of Oslo, paras. 77 and 136.

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  7. GC C-363/99 of 12 February 2004 Postkantoor, paras. 70 and 86; GC C-307/11 P of 26 April 2012 Deichmann, para. 46; EFTA Court E-5/16 of 8 April 2017 Municipality of Oslo, para. 138; see also CJEU T-323/00 of 2 July 2002 SAT.2 , para. 40; GC T-360/00 of 9.10.2002 UltraPlus, para. 30; GC T-345/99 of 26.10.2000 Trustedlink, para. 30 f.; GC T-359/99 of 7.6.2001 EuroHealth, para. 48; GC T-34/00 of 27.2.2002 EUROCOOL, para. 25; GC T-79/00 v. 27.2.2002 LITE, ref. 18; in contrast, with regard to the relationship between the grounds for refusal ‘distinctive character’ and ‘shape of the product’ GC T-122/99 v. 16.2.2000 Form einer Seife I, ref. 43 et seq. 45.

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  8. CJEU C-64/02 P of 21.10.2004 THE PRINCIPLE OF CONVENIENCE IT, ref. 40.

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  9. See CJEU C-304/06 P of 8 May 2008 Eurohypo, ref. 54 ff.; in the same direction also BGH I ZB 46/05 of 3 April 2008 Käse in Blütenform II, ref. 20.

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  10. In most cases, case law practice is still different; but see, for example, GC T-183/03 of 14 September 2004 APPLIED MOLECULAR EVOLU.

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