The law does not distinguish between different categories of trade marks when assessing distinctiveness.[1] The criteria for assessing the distinctiveness of slogans and advertising catchwords,[2] of trade marks consisting of personal names,[3] of figurative or word/figurative marks,[4] of figurative marks representing the goods,[5] of abstract colour marks,[6] three-dimensional marks consisting of the shape of the goods[7] or sound marks[8] are therefore no different from those applied to other categories of trade marks, and in particular they are no stricter. The fact that a sign – for example, the shape of a product – simultaneously fulfils several functions is, in principle, irrelevant to its distinctiveness.[9] Rather, the distinctiveness of a trade mark, regardless of which category it belongs to, must be the subject of a specific assessment.[10]
For example, no stricter general assessment criteria may be applied to trade marks consisting of a personal name. A schematic examination of whether a certain number of people have the same name or whether competing companies have the same name is therefore not sufficient. Nor does the fact that the specific assessment of the distinctiveness of certain trade marks may present greater difficulties mean that these trade marks a priori have no distinctive character or can only obtain an distinctive character through use.[11] In particular, the registration of a trade mark consisting of a surname cannot be refused in order to prevent the first applicant from obtaining an advantage.[12] However, this may not apply to well-known names if they can serve as a (for example, descriptive) reference for very specific products – such as ‘Ringelnatz’ for books as a reference to the writer.[13]
On the other hand, certain categories of signs are not necessarily perceived in the same way by the public as a word or figurative mark, which the public is accustomed to perceiving in a direct manner as a sign identifying a specific product as originating from a particular source. Consumers are not accustomed to making assumptions about the origin of goods on the basis of their colour or the colour of their packaging, in the absence of any graphic or word element, since a colour per se is not in principle currently used in trade as a means of identification. This is because a colour per se does not normally stock the characteristic feature which distinguishes the goods of a particular undertaking from those of other undertakings.[14] The same applies respectively to trade marks consisting of single letters[15] or a personal name,[16] to the shape of goods or their packaging[17] and to a sign consisting of a design applied to the surface of a product[18], to sound marks[19] and, under certain circumstances, to advertising slogans.[20] The individual categories of trade marks will therefore be dealt with separately below.
Footnotes
CJEU C-53/01 to C-55/01 of 8 April 2003 Linde, ref. 42; CJEU C-445/02 P of 28 June 2004 Glaverbel, ref. 21; CJEU C-404/02 of 16 September 2004 Nichols, ref. 24; CJEU C-107/03 P of 23 September 2004 Shape of soap bar, ref. 48; CJEU C-447/02 P of 21 October 2004 Colour Orange, ref. 78; EFTA Court E-5/16 8 April 2017 Municipality of Oslo, ref. 125; GC T-36/01 9 October 2002 Glass Pattern I, ref. 23.
↩CJEU C-64/02 P of 21 October 2004 DAS PRINZIP DER BEQUEMLICHKEIT, ref. 34 and 36; CJEU C-398/08 P of 21 January 2010 Audi, ref. 36; CJEU C-311/11 P of 12 July 2012 Smart Technologies, ref. 25; also GC T-138/00 of 11 December 2001 DAS PRINZIP DER BEQUEMLICHKEIT, ref. 44; BGH GRUR 2000, 321, 322 Radio from here; BGH GRUR 2001, 1150 LOOK; BGH I ZB 18/13 of 10 July 2014 Gute Laune Drops, ref. 14.
↩CJEU C-404/02 of 16 September 2004 Nichols, ref. 25; GC T-40/03 of 13 July 2005 MURÚA/Julián Murúa Entrena, ref. 49.
↩GC T-91/01 of 5 December 2002 BioID, ref. 27.
↩CJEU C-144/06 P of 4 October 2007, ref. 38, red rectangular tablet with a blue oval core; GC T-128/01 of 6 March 2003, ref. 38, car grille.
↩BGH GRUR 2001, 1154, 1155 Colour mark violet; BGH GRUR 2002, 427, 429 Colour mark yellow/green; BGH I ZB 61/13 of 23 October 2014 Langenscheidt yellow, ref. 10; BGH I ZB 65/13 of 9 July 2015 Nivea Blue, ref. 11; BGH I ZB 52/15 of 21 July 2016 Sparkassen Red, ref. 14.
↩CJEU C-299/99 of 18 June 2002 Philips/Remington, ref. 48; CJEU C-53/01 to C-55/01 of 8 April 2003 Linde, ref. 42 and 49; CJEU C-456/01 P and C-457/01 P of 29 April 2004 Three-dimensional tablet shape I, ref. 38; CJEU C-468/01 P to C-472/01 P of 29 April 2004 Three-dimensional tablet shape II, ref. 36; CJEU C-473/01 P and C-474/01 P of 29 April 2004 Three-dimensional tablet shape III, ref. 36; CJEU C-136/02 P of 7 October 2004 Mag Instrument, ref. 30; CJEU C-173/04 P of 12 January 2006 Deutsche SiSi-Werke, ref. 27; CJEU C-24/05 P of 22 June 2006 Storck I, ref. 24; CJEU C-25/05 P of 22 June 2006 Storck II, ref. 26; CJEU C-144/06 P of 4 October 2007 Red and white rectangular tablet with a blue oval core, ref. 36; CJEU C-238/06 P of 25 October 2007 Develey, ref. 80; CJEU C-20/08 P 9 December 2008 Enercon, ref. 49; CJEU C-345/10 P 20 October 2011 Freixenet, ref. 45; CJEU C-96/11 P of 6 September 2012 August Storck, ref. 33; CJEU C-97/12 P of 15 May 2014 Louis Vuitton Malletier, ref. 51; CJEU C-445/13 P of 7 May 2015 Voss of Norway, ref. 90; CJEU C-417/16 P of 4 May 2017 August Storck, ref. 33; CJEU C-26/17 P of 13 September 2018 Birkenstock Sales, ref. 32; already established in GC T-335/99 of 19 September 2001 Tablet for washing machines or dishwashers I, ref. 45; BGH GRUR 2001, 334, 335 Forklift I; BGH GRUR 2001, 56, 57 f. Liqueur Bottle; BGH I ZB 39/16 of 6 April 2017 Schokoladenstäbchen III, ref. 18; see also EFTA Court E-5/16 of 8 April 2017 Municipality of Oslo, ref. 126.
↩GC T-408/15 of 13 September 2016 Ringtone, ref. 41.
↩GC T-128/01 of 6 March 2003 Grille, ref. 43, with reference to GC T-36/01 of 9 October 2002 Glass Pattern I, ref. 24; see also CJEU C-107/03 P of 23 September 2004 Shape of a soap bar, ref. 53.
↩CJEU C-404/02 of 16 September 2004 Nichols, ref. 27.
↩On obtaining an distinctive character as a result of use, see below Section 4.4.4.
↩CJEU C-404/02 of 16 September 2004, Nichols, ref. 26 ff.
↩BPatG MarkenR 2008, 26 Ringelnatz; also BPatG MarkenR 2008, 33 Leonardo Da Vinci; BPatG MarkenR 2008, 119 Karl May; in contrast for mail order catalogues BPatG MarkenR 2008, 32 Mirabeau.
↩CJEU C-104/01 of 6 May 2003 Libertel, ref. 65; CJEU C-107/03 P of 23 September 2004 Form of a soap bar, ref. 49 f.; CJEU C-447/02 P of 21 October 2004 Colour orange, ref. 78; CJEU C-578/17 27 March 2019 Oy Hartwall, ref. 28 f.; BGH I ZB 61/13 23 October 2014 Langenscheidt yellow, ref. 10; similar already GC T-316/00 of 25 September 2002 Green and Grey, ref. 27; GC T-173/00 of 9 October 2002 Orange, ref. 29.
↩CJEU C-265/09 P of 9 September 2010 OHMI v BORCO-Marken-Import, ref. 33 ff.
↩CJEU C-404/02 of 16 September 2004 Nichols, ref. 28.
↩CJEU C-53/01 to C-55/01 of 8 April 2003 Linde, ref. 48; CJEU C-218/01 of 12 February 2004 Henkel, ref. 52, with reference to CJEU C-104/01 of 6 May 2003 Libertel, ref. 65; also CJEU C-456/01 P and C-457/01 P of 29 April 2004 Three-dimensional tablet shape I, ref. 38; CJEU C-468/01 P to C-472/01 P of 29 April 2004 Three-dimensional tablet shape II, ref. 36; CJEU C-473/01 P and C-474/01 P of 29 April 2004 Three-dimensional tablet shape III, ref. 36; CJEU C-107/03 P of 23 September 2004 Shape of a soap bar, ref. 49 f.; CJEU C-136/02 P of 7 October 2004 Mag Instrument, ref. 30; CJEU C-173/04 P of 12 January 2006 Deutsche SiSi-Werke, ref. 28; CJEU C-24/05 P of 22 June 2006 Storck I, ref. 25; CJEU C-25/05 P of 22 June 2006 Storck II, ref. 27; CJEU C-497/07 P of 27 June 2008 Philip Morris Products, ref. 25; CJEU C-96/11 P of 6 September 2012 August Storck, ref. 34; CJEU C-97/12 P of 15 May 2014 Louis Vuitton Malletier, ref. 51; CJEU C-445/13 P of 7 May 2015 Voss of Norway, ref. 90; CJEU C-26/17 P 13 Sept. 2018 Birkenstock Sales, ref. 32; BGH I ZB 39/16 6 April 2017 Schokoladenstäbchen III, ref. 18.
↩CJEU C-445/02 P of 28 June 2004 Glaverbel, ref. 22 f.; GC T-36/01 of 9 October 2002 Glass Pattern I, ref. 23.
↩GC T-408/15 of 13 September 2016 Klingelton, ref. 41 f.
↩CJEU C-64/02 P of 21 October 2004 DAS PRINZIP DER BEQUEMLICHKEIT, ref. 35; CJEU C-398/08 P of 21 January 2010 Audi, ref. 37 f.; CJEU C-311/11 P of 12 July 2012 Smart Technologies, ref. 26.
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