The ground for refusal of customary designations under Art. 4 I lit. d TMD, Art. 7 I lit. d EUTMR or Sec. 8 II No. 3 MarkenG is of much less importance in practice than the ground for refusal of descriptive indications.
This ground for refusal initially gave rise to discrepancies in interpretation. The starting point of this dispute was a difference in the wording of Art. 4 I lit. d TMD on the one hand and (the German version) of Art. 7 I lit. d EUTMR and Sec. 8 II No. 3 MarkenG on the other. The first TMD excludes trade marks ‘which consist exclusively of signs or indications which are customary in the current language or in the bona fide and established practices of the trade’. The EUTMR and MarkenG further specify that only signs or indications ‘designating the goods or services’ are covered.
In its Bravo decision, the CJEU decided the dispute in favour of the linguistic version of the EUTMR and MarkenG: The ground for refusal must be interpreted as precluding the registration of a trade mark only if the signs or indications of which that trade mark consists exclusively have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of that trade mark has been applied for. Whether certain signs or indications possess such distinctiveness cannot be assessed in the abstract without taking into account the goods or services they are intended to distinguish.^[1] Whether the designation has always been customary or - as the wording of the EUTMR and MarkenG suggests - has ‘become customary’ is irrelevant. Otherwise, the public interest underlying the provision of preventing the monopolisation of product names would not be safeguarded. It is also irrelevant whether there are alternative names for the designation.^[2]
For example, ‘Super’ designates the product itself in connection with ‘fuels’, but not in connection with other products. The ground for refusal of customary designations applies in the fuel sector, but not in other product sectors. ‘PAST PERFECT’ is not a customary designation for sound carriers.^[3] A three-dimensional bear shape for snacks is also not customary to designate the goods in question.^[4] In contrast, the designation “Walkman”, which was originally introduced as a trade mark, has become a customary product designation in Austria.^[5]The designation ‘WEISSE SEITEN’ applies respectively to ‘magnetic recording media and recorded storage media for data processing equipment and devices, in particular tapes, discs, CD-ROMs’ and ‘printed matter, trade directories, reference works’, where ‘weiße Seiten’ simply designates a telephone directory.^[6] The term ‘BSS’ is also not protectable in connection with ophthalmic products, where ‘BSS’ has become the usual abbreviation for a balanced salt solution.^[7]
It happens time and again that the name of a person who has developed a particular method or product is increasingly used as a synonym for the method or product. The examination as to whether this has resulted in a development into a generic name is subject to strict requirements. As long as a relevant public still adheres to the meaning of the word as an indication of the origin of the goods or services from a particular business, such a development cannot be assumed.^[8] If a term is included in a lexicon as a generic term, this speaks in favour of the existence of a generic term; however, this presumption can be rebutted.^[9]
For example, ‘Kneipp’ may be a synonym for certain health-related treatment methods, but not for beauty care or even the accommodation and catering of guests.^[10]
If the trade mark is aimed at professionals, even the smallest deviations from the usual designation can lead to protectability.
For example, although the term ‘Omeprazol’ designates a specific active pharmaceutical ingredient, the trade mark ‘Omeprazok’ for medicinal products is eligible for protection. Specialists notice the modification of the name they are familiar with.^[11]
Furthermore, in the case of compound trade marks, it is not sufficient that the individual components have become common product designations. Rather, the sign as a whole must also be taken into account in this respect.
Therefore, even if - which is already incorrect - the individual components ‘I. T.’, ‘@’ and ‘MANPOWER’ of the trade mark ‘I. T.@MANPOWER’ were to be customary product designations in the field of employment services, the overall sign would nevertheless not be unprotectable as a customary designation for this reason alone.^[12]
Some passages of the CJEU's reasoning in the Bravo decision have caused confusion regarding the ground for refusal of protection of the customary designation: The Court stated that the validity of the provision - in order to give practical validity to the ground for refusal - should not be limited to trade marks that describe the properties or characteristics of the labelled products.^[13] Parts of the literature^[14] want to conclude from this that general advertising slogans also fall under the ground for refusal, which do not so much contain a specific description as primarily convey indications of a general nature that are customary in trade.
According to this view, expressions such as ‘cheap prices’, ‘discount’, ‘self-service’ in connection with products of daily mass consumption would not be protectable. Here, the expressions are customary in the trade.
However, this is not convincing.^[15] Rather, the CJEU requires that the sign in question is customary to designate the products.^[16] Any other customary use in connection with the products in question is not sufficient. With its misunderstood wording, the CJEU merely wants to clarify that it is sufficient for the refusal of the application if the designation in question designates the products themselves; it is not necessary that properties or characteristics of the products are also described at the same time.
In the context of motor vehicles, the term ‘car’ merely designates the product itself, while the term ‘diesel’ also designates properties of the product - namely the type of fuel required and the design of the engine. This is irrelevant for the ground for refusal of the customary designations. In both cases, the ground for refusal applies.
Finally, it is therefore irrelevant whether the sign is used as an advertising slogan, an indication of quality or an invitation to purchase the products.^[17]
For example, the general suitability of the designation ‘Unter Uns’ for advertising purposes does not constitute a ground for refusal under the ground for refusal of the customary designation.^[18]