In the examination of distinctiveness, both the usual use^[1] of the trade mark in the affected areas as an indication of origin and the perception of the relevant public^[2] are to be taken into account.^[3] On the other hand, according to the case law of the CJEU, any evidence adduced should not merely show that consumers have become accustomed to the trade mark through its use, but rather that the trade mark immediately enabled them to distinguish the products bearing it from those of competing undertakings.^[4]
However, a lack of distinctiveness cannot be inferred from evidence of use by the applicant of the trade mark applied for.^[5] According to a judgment of the GC, this even applies to use as a customary and laudatory sign without any indication of commercial origin.^[6] However, the latter appears doubtful.^[7] It is true that use by the applicant itself will not initially prevent the public from associating the sign with the applicant. On the other hand, however, use by the applicant – for example, of a descriptive sign – can also dominate linguistic habits to such an extent that the sign loses its function of indicating origin.
For example, the designation ‘TDI’ may originally have had no meaning for motor vehicles and may have been distinctive. However, if the applicant, with a great deal of advertising expense, associates the initially distinctive sign with a specific descriptive meaning, such as ‘Turbo Diesel Injection’, the sign may lose its distinctiveness.^[8]
In this context, the customary use in the respective sector is to be examined. If there are several obvious possible uses, all of them are to be taken into account. On the other hand, uses that are conceivable in the relevant industry but are not practically significant and thus appear unlikely are to be classified as irrelevant, unless the applicant has provided concrete evidence^[9] that makes an unusual type of use in the sector in question likely in his case.^[10] Future uses may play a role, especially since the applicant cannot and need not know at the time of filing how he will later use the sign.^[11]
It was therefore going too far when the Federal Court of Justice considered the photographic image of Marlene Dietrich to be eligible for registration for goods such as clothing, coins or goods made of paper, even though the image is not understood by the public as an indication of origin when used as a fan article, on commemorative coins, posters or collector's images.^[12] This is because there was no evidence that photographic images of celebrities were actually used on sewn-in labels on items of clothing in the clothing industry.^[13]
For a long time, it was unclear how to decide when several obvious variants of use exist and the sign has distinctive character for one use but not for another. In this respect, the Federal Court of Justice (BGH) did not want to deny such trade marks concrete distinctiveness either, taking into account the labelling environment, which the public would not understand in isolation as an indication of origin, but as soon as it becomes clear from the context of the trade mark use that the labelling is a trade mark.^[14] Nor did it require the trade mark to be limited to the effect that protection was sought only for the affixing of the sign in a specific place (so-called position mark).^[15] It was only if the public did not attribute any distinctive character to the trade mark word because of its proximity to the goods claimed, irrespective of the presentation – for example, also on labels – that it was not protectable.^[16]
Thus, the designation ‘SWISS ARMY’ should not lack any capability of distinguishing the goods ‘fashionable wristwatches of Swiss origin’. Based on experience, there are obvious ways to use the words in identifying wristwatches in such a way that they are readily understood by the public as a trade mark. This applies in particular if the words are placed on the dial in a position where a trade mark is usually found on watches.^[17]
This case law of the Federal Court of Justice was called into question following a decision of the CJEU. This is because, to begin with, the CJEU did not want to examine all conceivable uses in its examination of distinctiveness, but rather to focus on the most likely use.^[18]
Therefore, if, for example, the trade mark

applied for in relation to shoes, it was not relevant that the sign could be used on labels or in catalogues in such a way that it could serve as an indication of origin. This is because the most likely use was as a decorative element on shoes.^[19] By contrast, in the case of the trade marks

which are red and orange, it must be taken into account if the proprietor usually uses the trade marks as follows

on means of transport, because the actual use of the mark by the proprietor must be taken into account in the examination of distinctiveness.^[20]
In the meantime, however, the CJEU has, upon referral by the Federal Court of Justice,^[21] clarified that this strict approach only applies if only one possible use is practically significant.^[22]
The subject of the decision was the trade mark application ‘#darferdas?’ for clothing. Two possible uses were obvious in practice – on the one hand as a large print on the front of the garment, on the other hand in the sewn-in label.^[23] The trade mark was therefore eligible for protection.