An ambiguous or vague sign can also be excluded from registration if it designates a characteristic of the products in question in at least one of its possible meanings. According to the wording of the relevant provisions, a ground for refusal already arises if the sign 'may' be used for the purpose of describing characteristics.^[1] It is therefore not a criterion whether the sign is exclusively descriptive of the products or their characteristics covered by it or whether its meaning goes beyond the exclusively descriptive character.^[2] Rather, it must be examined whether the word combination at issue is capable of being used by other economic operators to designate a characteristic of their products.^[3]
The GC and CJEU^[4] therefore did not confirm, for example, the CJEU's Doublemint decision, which held that the term DOUBLEMINT was not descriptive of chewing gum because the term had two different meanings and could be interpreted by the public, on the one hand, as meaning that products with two different types of mint and, on the other hand, as meaning that products with twice the amount of mint are labelled.^[5] The term 'SPA' also has different meanings; since 'SPA' also describes certain wellness and health services, the word is not registrable for these goods because of the direct reference to the goods 'perfumeries, means for body and beauty care'.^[6] 'PrimeCast' is descriptive for moulds in the meaning 'first-class mould' even if the term may indicate a 'first-class cast' in the field of film.^[7] The fact that the term 'Manufaktur' originally refers to manual labour does not prevent it from being used in the word formation 'Vermögensmanufaktur' as a reference to individually performed, high-quality work.^[8] Nor does the ambiguity of the term 'LOTTO' - once as a general reference to any game of chance, once to the specific game of chance 6 out of 49 - take away its descriptive character.^[9] The indication 'POST' is descriptive of the services of transport and delivery of goods, letters and parcels.^[10] Finally, 'FUSSBALL WM 2006'^[11] and 'WM 2006'^[12] designate not only a specific FIFA service, but also a major event. The terms are therefore descriptive and not registrable for products that may be associated with such a major event.^[13] Similarly, it does not help the application 'DüsseldorfCongress' that it describes both a congress and a congress service provider in Düsseldorf.^[14] In contrast, the sign '16PF' was registrable in the field of behavioural research and personality tests; it is not readily apparent that the trade mark can stand for '16 personal factors'.^[15]
The fact that an ambiguous sign can also be descriptive leads to the fact that, in the case of geographical designations, the uniqueness of the place name is not a prerequisite for the ground for refusal to apply. The fact that the place name can also be recognised as a proper name does not eliminate its descriptive character.
Although, for example, the place name 'Lichtenstein' exists several times in Germany and also occurs as a surname, it can serve as a geographical indication and be not protectable.^[16]
In various decisions, however, the GC^[17] and the BGH^[18] have denied the descriptive character of the signs applied for on the grounds that the signs have different meanings and are vague. The GC most recently specified that the sign must have a sufficiently direct and specific connection with the products in question to enable the relevant public to perceive immediately and without further thought a description of the type of products in question or one of their characteristics.^[19] Whether this case law was always correct in specific cases appears doubtful. Rather, a descriptive character is only likely to be lacking if the meaning of a sign is so vague that its use to describe characteristics cannot reasonably be expected.
For example, in the case of the sign 'THE HOME DEPOT', it is not to be expected that the German public would ever use the word combination as a description for a depot of household articles.^[20] In contrast, a descriptive use does not appear to be ruled out in the case of the word sequence 'RATIONAL SOFTWARE CORPORATION' for IT products. The ambiguity of the term 'RATIONAL' should not lead to protectability.^[21] The sign 'CLEARWIFI' for the provision of wireless internet services was also descriptive.^[22] The same applies to a trade mark 'CELLTECH' for medical products, where the GC denied a sufficiently direct connection and thus the ground for refusal - probably too broadly.^[23] The English word 'SCOPE' was also eligible for protection in the field of finance.^[24] The different meanings of 'URLAUB DIREKT' in the tourism sector do not change the fact that the term indicates, in a not uncommon catchphrase-like conceptualisation, that the target public can directly book or purchase the travel service offered. The different meanings merely refer to the different ways in which the service thus designated can be supplied (direct receipt of a complete holiday package, possibility of booking on the spot without intermediary activity, immediate booking possibility, possibility of starting the holiday immediately), without cancelling out the descriptive character.^[25] The slogan 'VOM URSPRUNG HER VOLLKOMMEN' for beers was also descriptive in that it referred to the purity of the original products of the beers.^[26] Finally, the exclamation 'hey!' is not so vague that it would be perceived by the public as an indication of origin.^[27]
According to the case law of the GC^[28] - which is probably correct so far - there is no descriptive designation^[29] if the high quality of the products is merely advertised indirectly and abstractly in a generalised manner without, however, directly and immediately informing the consumer of a specific quality or characteristic. Such a trade mark falls into the area of creating associations and not into that of a designation within the meaning of the ground for refusal.
On this basis, the word 'UltraPlus' was not directly descriptive of the product 'fireproof tableware'. The juxtaposition of the two words 'ultra' and 'plus', indicating an increase, did not in itself designate a property or characteristic of the utility goods in question.^[30] 'FUN' was also not descriptive of a characteristic in the context of land vehicles; the fact that one can have fun with vehicles does not automatically mean that the public would recognise a reference to any vehicle characteristics in the term 'FUN'.^[31]The same is said to apply - probably incorrectly - to a trade mark 'EUROPREMIUM' in the transport sector.^[32] However, the GC^[33] would probably go too far if it considered the term 'VITALITE', a possible capitalisation of the French word 'vitalité' (vitality, vitality), to be descriptive only for goods that serve medical, nutritional or specific dietary purposes; on the other hand, 'VITALITE' should not be used to designate baby food and mineral water or to provide information about their characteristics; here, the sign does not designate any product characteristics, but only alludes to them.
Whether a sign is vague or ambiguous is strongly dependent on the assessment. The characteristic is therefore a gateway to inconsistency in case law. It is not only noticeable that case law in invalidity proceedings is more likely to affirm protectability than in registration proceedings^[34]; there are also fluctuations over time. For example, it has been noticeable since around 2017 that the GC's case law has been more generous towards the applicant: after eligibility for protection had previously been denied in almost all registration proceedings, there has now been a conspicuous accumulation of decisions in which the EUIPO's assessment has not been confirmed:
For example, decisions on the three trade marks 'Limbic® Map', 'Limbic® Types' and 'Limbic® Sales' applied for printed matter and management consultancy were annulled; although the term 'limbic' referred to the 'limbic system', a brain region that influences hormonal control and the autonomic nervous system, a direct descriptive connection to the goods and services applied for was not recognisable.^[35] Later, the GC held that the trade mark 'Windfinder' was descriptive of meterological products, but not of software.^[36] Although 'VANGUARD' had a similar meaning to the term 'avant-garde', there was a lack of direct descriptiveness for the product 'projectiles for irritation and disorientation.'^[37] The abbreviation 'fluo.' could be understood in the sense of the word 'fluorescent', but was still not directly descriptive of screens,^[38] 'FLEXLOADER' was descriptive of industrial robots, but not of other devices.^[39] The sign 'vita' was not descriptive for kitchen machines and kitchen utensils despite the allusion to the Swedish word 'vit' (= 'white'), although these goods can be offered in white colour and although the term 'white goods' exists for larger household appliances not covered by the application.^[40] 'SIENNA SELECTION' for electronic cigarettes was also eligible for protection.^[41] ' MobiPACS' was not understood by the public as a combination of the abbreviations 'mobil' and 'packs'.^[42] The term 'reasl nature' was descriptive for animal feed and similar products, but not for advertising and consultancy services.^[43] ' REAKTOR' was not descriptive for goods and services in the IT sector.^[44] 'Cinkciarz', which in Polish pejoratively refers to a person who secretly engages in illegal currency exchange, was not directly descriptive of the goods software and sunglasses or of services in the fields of banking, education, publishing or film; rather, the public understood that products related to illegal currency exchange were not actually offered.^[45] ' HELL' was not descriptive of coffee, although the term could be understood as referring to a mild roast.^[46] Similarly, the trade mark 'CoolTUBE' was registered for insulating sleeves for electrical cables because an understanding of 'cool' as referring to cooling was not relevant, but cool was to be understood vaguely in the sense of 'casual' or 'pleasant.'^[47] Finally, ' NOMAD' was not descriptive of bags and suitcases because there is no particular style that could be described as 'nomadic.'^[48]