4.4.1.7: Insignificance of synonyms and the absence of competitors

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It is also irrelevant for the examination of the ground for refusal of descriptive indication whether there are synonyms of the trade mark word that can be used to designate the same characteristics of the products in question. This applies even if there are more commonly used signs or indications to designate these characteristics.[1] Although the ground for refusal requires that the trade mark consists 'exclusively' of signs or indications descriptive of characteristics, it does not require that these signs or indications are the exclusive means of designating the characteristics in question.[2]
For example, the word 'STREAMSERVE', which is made up of a basic verb (serve) and a noun (stream), is descriptive of products in the IT sector. The word refers to a technology for the transmission of digital data from a server through which it can be processed in an even and uninterrupted flow. The fact that competitors would be able to use numerous other composite signs containing the word 'stream' or the word 'serve' is irrelevant.[3] Nor does the fact that the term 'pork' exists in English for 'pork' make the term 'EUROPIG' for meat and sausage products registrable.[4]
Further, the number of competitors who might have an interest in using the signs or indications of which the trade mark consists is irrelevant.[5] Even if there is currently no competitor, the general public still has an interest in being able to use descriptive terms in the future without infringing third-party monopoly rights.[6]
For example, the term 'Lotto' for products in connection with lottery games is descriptive even if there is still a de facto state monopoly for the products in question in Germany.[7]
However, the case may be different if only legal entities under public law could use the trade mark. This is because there is no threat of unlawful monopolisation in the future.
For example, the designation 'Stadtwerke Bremen' is not an indication that must be kept free. Its meaning is not limited to the description of basic supply services in the catchment area of the City of Bremen, but designates supply services of a municipal company that is at least majority-owned by the City of Bremen.[8]

Footnotes

  1. GC C-363/99 of 12 February 2004 Postkantoor, para. 61; GC C-265/00 of 12 February 2004 Campina Melkunie, para. 42; also GC T-106/00 of 27 February 2002 STREAMSERVE, paras. 27 and 39; GC T-355/00 of 20 March 2002 TELE AID, para. 27; GC T-356/00 of 20 March 2002 CARCARD, ref. 2002 CARCARD, ref. 27; GC T-405/05 of 15 October 2008 MANPOWER, ref. 61 f. and 64, confirmed in conclusion by CJEU C-553/08 P of 2 December 2009 Powerserv Personalservice; BGH GRUR 1970, 416, 418 Turpo; BGH I ZB 53/05 of 13 March 2008 SPA II, ref. 22.

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  2. CJEU C-265/00 of 12 February 2004 Campina Melkunie, ref. 42.

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  3. GC T-106/00 of 27 February 2002 STREAMSERVE, paras. 27, 39, 42-44 and 49, confirmed in conclusion by GC C-150/02 P of 5 February 2004 Streamserve, para. 31.

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  4. GC T-207/06 of 14 June 2007 EUROPIG, ref. 33 ff.

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  5. CJEU C-363/99 of 12 February 2004 Postkantoor, ref. 61; CJEU C-51/10 P of 10 March 2011 Agencja Wydawnicza Technopol v OHIM, ref. 39; also BGH I ZB 70/10 of 17 August 2011 Institut der Norddeutschen Wirtschaft e. V., ref. 17.

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  6. BGH I ZB 43/15 of 9 November 2016 Stadtwerke Bremen, ref. 42; still left open by BGH I ZB 14/05 of 3 November 2005 Casino Bremen, ref. 7; BGH I ZB 53/05 of 13 March 2008 SPA II, ref. 24; on the WZG, however, BGH GRUR 1993, 43 Römigberg; in contrast to the bad faith application also GC T-167/15 of 5 July 2016 NEUSCHWANSTEIN, ref. 58.

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  7. See BGH I ZB 11/04 of 19 January 2006 LOTTO, ref. 13.

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  8. BGH I ZB 43/15 of 9 November 2016 Stadtwerke Bremen.

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