In practice, companies often try to circumvent the ground for refusal of protection of the descriptive indication by not using a directly descriptive indication for their trade mark, but by borrowing from such an indication. In this context, any recognisable deviation in the wording of a word combination applied for from the expression used in common parlance by the relevant public to designate the essential characteristics of the product is sufficient to give a word combination the distinctive character required for its registration as a trade mark.[1]
Word formations such as 'Baby-dry', for example, cannot be regarded as descriptive in their entirety; rather, they are the result of a lexical invention which enables the trade mark thus formed to fulfil a distinctive function and cannot be excluded from registration as descriptive of a characteristic.[2] The placement of an adjective after a noun is unusual in English.[3] Similarly, 'PAST PERFECT' is not descriptive of phonograms and cannot be understood as a general reference to music of the past.[4] The public will also notice the deviation of the trade mark 'Roximycin' from the technical term 'Roxithromycin'.[5] In contrast, the deviation of the sign applied for 'Lichtenstein' from the correct spelling of the Principality of Liechtenstein is not recognisable; the public often overlooks the deviation.[6] The GC also did not want to allow the omission of a letter 'c' in 'Magicrown' to suffice because this could be overlooked.[7] 'pac' was also equated with the English word 'pack' in connection with packaging materials.[8] The same applies to the prefix of the sign '>' in the sign '>packaging' for packaging materials and services from the packaging and logistics industry.[9] Whether a sign would be protectable as a company sign is irrelevant for the assessment of distinctiveness as a trade mark.[10]
Applicants often try to achieve a certain distance from the usual descriptive formulations on the one hand, but to preserve descriptive echoes of the sign on the other. Abbreviations of descriptive terms are often used for this purpose. However, this rarely leads out of the realm of description.[11] On the other hand, there is no linguistic principle based on experience that abbreviations are always automatically supplemented by the public and are therefore not protectable.[12]
For example, the term 'LIMO' for various goods in connection with lasers is not eligible for protection even if the abbreviation 'LIMOS' is understood by the specialist circles addressed in the sense of 'Laser Intensity Modulation Systems' and therefore an understanding of 'LIMO' in the sense of 'Laser Intensity Modulation' is possible.[13] 'ROI ANALYSER' means 'Return on Investment Analyser'.[14] The word mark 'ROBOTUNITS' is descriptive of machines and machine components in the sense of 'robot unit' or 'robot part'. [15] The element 'i' in the sign 'ilink' is understood as a reference to information and communication technologies and in particular to the Internet,[16] but can - for example in the sign 'iGrill' for barbecue accessories - also stand for 'intelligent' in general.[17] 'TDI' is descriptive for motor vehicles as an abbreviation for 'Turbo Diesel Injection' or 'Turbo Direct Injection'.[18] 'BKK' is descriptive as an abbreviation of 'Betriebskrankenkasse' in relation to insurance services.[19] 'CINE ACTION' and 'CINE COMEDY' are descriptive in the film sector,[20] 'WinDVD Creator' in the IT sector,[21] 'POWDERMED' for pharmaceuticals,[22] 'medi' for general medical-related products,[23] 'BioMonitor' for pacemakers and devices used to control and monitor bodily functions.[24] 'EuroHealth'[25] or 'EUROHYPO'[26] can be used to designate health insurance services or financial services that are offered throughout Europe. 'TELE AID' is descriptive in the sense of "help from a distance" for car emergency call systems, breakdown assistance and similar products, but not for devices for the transmission of languages and data, data processing devices, navigation devices or the operation of a communication network.[27] "PharmaResearch" is understood as an abbreviation for "pharmaceutical research".[28] In contrast, "Kaleido" is not a common or even obvious abbreviation for "kaleidoscope" and is therefore protectable for toys.[29]
Footnotes
CJEU C-383/99 P of 20 September 2001 Baby-dry, ref. no. 40; contrary to GC T-360/99 of 26 October 2000 Investorword, ref. no. 23.
↩GC C-383/99 P of 20 September 2001 Baby-dry, ref. 44; problematic against this background GC T-79/01 and T-86/01 of 20 November 2002 Kit Pro and Kit Super Pro, ref. 23 ff.
↩The fact that the CJEU only focuses on the English-speaking consumer in the context of the EU trade mark and does not take into account the fact that the linguistic nuance will escape many consumers who are only partially familiar with the English language is problematic and can probably be attributed to the appeal procedure and the resulting limited examination competence. The CJEU can hardly be accused of having pedagogical ambitions to teach consumers in other countries the correct use of the English language; see also GC T-320/03 of 15 September 2005 LIVE RICHLY, ref. 76.
↩GC T-133/06 of 23 October 2008 PAST PERFECT, ref. 31 ff.
↩BGH GRUR 2005, 258, 260 Roximycin.
↩BGH GRUR 2003, 882, 883 Lichtenstein.
↩GC T-218/16 of 16 May 2017 Magicrown, ref. 21 f.
↩GC T-662/18 of 4 July 2019 twistpac, ref. 24 ff.; but see also GC T-272/18 of 5 June 2019 MobiPACS, ref. 39 ff.
↩GC T-64/09 of 8 September 2010 packaging, ref. 40 et seq.
↩BGH I ZB 29/13 of 15 May 2014 DüsseldorfCongress, ref. 18.
↩For example GC T-439/04 of 3 May 2006 EUROHYPO, ref. 51 ff., confirmed by CJEU C-304/06 P of 8 May 2008 Eurohypo; but see the overly far-reaching decision BGH GRUR 1995, 408 PROTECH.
↩BGH I ZB 72/11 of 22 November 2012 Kaleido, ref. 22.
↩GC T-311/02 of 20 July 2004 LIMO, ref. 44.
↩GC T-233/08 of 10 September 2010 ROI ANALYZER, confirmed by CJEU C-536/10 P of 7 July 2011 MPDV Mikrolab.
↩GC T-222/02 of 23 November 2003 ROBOTUNITS, paras. 39-54; similarly on tool clamps GC T-61/03 of 27 May 2004 QUICK GRIP, para. 29 ff.; on a computer system for distance selling of medicines GC T-289/02 of 8 July 2004 TELEPHARMACY SOLUTIONS, para. 46 ff.; on tin alloys using the abbreviations ‘Sn’ (tin), ‘TEM’ (temper), ‘PUR’ and ‘MIX’ GC T-367/02 to T-369/02 of 12 January 2005 SnTEM, SnPUR, SnMIX, para. 22 ff.; in the music sector GC T-315/03 of 8 June 2005 Rockbass, para. 59 ff, appeal later withdrawn (CJEU C-301/05 P of 11 October 2007 Wilfer); on the unprotectability of ‘PAPERLAB’ for ‘data processing equipment and measuring instruments for the control and examination of paper’ GC T-19/04 of 22 June 2005 PAPERLAB, ref. 23 ff.
↩GC T-161/09 of 16 December 2010 ilink, ref. 30; respectively GC T-225/14 of 3 September 2015 IDIRECT24, ref. 54 and 59.
↩GC T-35/17 of 31 January 2018 iGrill, ref. 22.
↩GC T-16/02 of 3 December 2003 TDI I, ref. 30 ff., appeal (case before the CJEU C-82/04 P) settled after withdrawal of the application; GC T-318/09 of 6 July 2011 TDI, appeal (case before the CJEU C-467/11 P) also settled after withdrawal of the application; GC T-174/07 of 28 January 2009 TDI II, ref. 32 ff, also on complementary products such as engine oil; on the descriptive character of ‘Turbo’ also GC T-210/17 of 22 February 2018 ZITRO TURBO 2/TRIPLE TURBO, ref. 32 ff.; GC T-349/18 of 11 July 2019 TurboPerformance, appeal not allowed by CJEU C-696/19 P of 19 December 2019 Andreas Hauzenberger.
↩GC T-289/08 of 11 February 2010 Deutsche BKK, ref. 41.
↩GC T-135/99 of 31 January 2001 CINE ACTION, ref. 27 ff.; GC T-136/99 of 31 January 2001 CINE COMEDY, ref. 27 ff.
↩GC T-105/06 of 17 October 2007 WinDVD Creator, ref. 35 ff.
↩GC T-166/06 of 29 September 2008 POWDERMED, ref. 24 ff.
↩GC T-470/09 of 12 July 2012 medi, confirmed in conclusion by CJEU C-410/12 P of 16 October 2013 medi.
↩GC T-257/08 of 9 July 2009 BioMonitor, ref. 24 ff.
↩GC T-359/99 of 7 June 2001 EuroHealth, ref. 26 and 36 ff.
↩GC T-439/04 of 3 May 2006 EUROHYPO, ref. 51 ff., confirmed by CJEU C-304/06 P of 8 May 2008 Eurohypo.
↩GC T-355/00 of 20 March 2002 TELE AID, ref. 30-45.
↩GC T-464/07 of 17 June 2009 PharmaResearch, ref. 32 ff.
↩BGH I ZB 72/11 of 22 November 2012 Kaleido.
↩