Even signs that only 'may' serve to describe characteristics must - according to the wording of the provision - be kept free.^[1] It is sufficient for a trade mark application to be refused if the sign does not already represent a description of the characteristics of the goods or services concerned in the eyes of the relevant public, but can only reasonably be expected to do so in the future.^[2] It is also not necessary that the sign is or could become customary.^[3]
The signs 'Universaltelefonbuch' and 'Universalkommunikationsverzeichnis', for example, are not currently used, but are equivalent to the terms 'universales Telefonbuch' and 'universales Kommunikationsverzeichnis' in German. They can therefore designate the type of data carriers and printed products as well as the destination of the services of a publishing house or an editor.^[4] The term 'THE COFFEE STORE' can also potentially be used for coffee, tea or the services of a café; the preceding article 'THE' does not change this.^[5] 'STREETBALL' is (potentially) descriptive of clothing even if no special sportswear for the sport of streetball exists; experience has shown that almost every sport has its own style of clothing.^[6] Finally, 'AIRSHOWER' can already be descriptive of shower systems today if certain research results and technical developments lead to the expectation of such shower systems in which air is added to the water.^[7]
The CJEU has specified the significance of future possible uses in connection with geographical indications. Here, it does not matter whether the name designates a place that is already famous for the category of goods concerned and is therefore associated with this category of goods by the relevant public. However, it is relevant to what extent the name and the characteristics of the designated place are more or less well known.^[8]
However, the case law of the GC and the Federal Patent CourtBPatG diverge in this respect: For example, according to a GC decision, the town of 'Cloppenburg' is - very broadly - not said to be sufficiently well known to serve as a geographical indication in connection with retail services.^[9] The same is said to apply to 'PORT LOUIS' in Mauritius, which is not said to be sufficiently well known even to nationals of the former colonial powers France and Spain to be descriptively associated with leather goods, bed and table covers or clothing.^[10] 'MONTANA' was also protectable for furniture because there were no indications that it would be understood in terms of geographical origin.^[11] Even the sign 'MADRIDEXPORTA', which could be understood as a reference to the promotion of exports of Madrid companies, was - too liberally - not descriptive for the sale of publications or the offering of services in the field of finance, transport and advertising.^[12] 'Monaco', on the other hand, was descriptive of printed matter, entertainment and travel services and therefore could not be registered for the Monegasque state.^[13] The BPatG also held that the trade mark 'PORTLAND' was not registrable for foodstuffs.^[14]
The provision is also not relevant if the designation is not known to the relevant public at all or at least not as the designation of a geographical place or if, due to the characteristics of the designated place (e.g. a mountain or a lake), it is unlikely that the relevant public could assume that the relevant group of goods originates from that place. Although the indication of the geographical origin of the goods within the meaning of the provision is usually the indication of the place where the goods have been or could be manufactured, it cannot be excluded that the link between the group of goods and the geographical place is based on other connecting factors, such as the fact that the goods have been designed in the geographical place in question.
If, for example, a lake is named - as in the case of the name 'Chiemsee' - this name can be understood by the relevant public as including the shores of the lake or its surroundings. If the public assumes that the designated product is designed in the Chiemsee region, the name may not be protectable.^[15] 'SUEDTIROL' is also not protectable as a geographical indication.^[16] In contrast, 'ALASKA' was protectable for mineral water and fruit drinks because the relevant public would not associate the distant Alaska with the drinks.^[17] 'Neuschwanstein Castle' is also eligible for protection because the castle and its surroundings are not known for the manufacture of goods and because the fact that goods are sold there does not result in a description of the characteristics of the goods.^[18]
Future uses may also become relevant if the products in question cannot currently - for technical reasons, for example - have a certain characteristic that the trade mark describes. In this case, the GC will allow it to suffice that the public could believe that a description of a characteristic exists. Even then, the sign does not act as an indication of origin.
For example, a trade mark 'BIOGENERIX' was descriptive of certain chemical^[19] and pharmaceutical products, although the possibility of producing biological generics is scientifically disputed. It depends on the understanding of the relevant public, most of whom have no knowledge of the scientific debate.^[20]