Similarly, the ground for refusal of a word mark lacking distinctiveness is somewhat irrelevant in the case law of the Federal Court of Justice. In its constant case law,^[1] the BGH works with a specific formula^[2] that is tailored to word marks. The formula covers two groups of cases. According to the first group of cases, distinctiveness is to be affirmed if no predominant descriptive conceptual content can be attributed to the trade mark for the products in question. This first group of cases in the formula thus essentially covers the ground for refusal of descriptive information.^[3] However, future possibilities of use are not to be taken into account – which is not very convincing.^[4] Beyond this first case group,^[5] the second case group includes those terms in German or a well-known foreign language,^[6] which are always understood by the public – for example, also because of their respective use in advertising – only as such and not as a means of distinction. The second case group thus essentially concerns certain slogans, advertising buzzwords and other word sequences.^[7]
Even if the BGH does not want to take into account future possibilities of use, the fact that a term – written together or separately in the case of compound terms – is not listed in dictionaries does not preclude the lack of any distinctive character.^[8]
Although the term ‘marktfrisch’ (fresh from the market), for example, cannot be proven in the dictionary, it is not distinctive for food. The public will understand the term in the sense of ‘fresh from the market’ as a factual reference, but not as an indication of origin.^[9] This applies respectively to ‘anti KALK’ in connection with descaling agents.^[10]
In the meantime, the BGH also wanted to pursue a rather wacky approach that has been overtaken by the CJEU's case law: if, in a product area, product designations are largely descriptive in nature, the public will generally also be particularly aware of the indication of origin that differs only slightly from the descriptive designation.
For example, the designation ‘City Plus’ for a telephone tariff has strong descriptive connotations because of its similarity to ‘City-Tarif Plus’ – a tariff that promises additional local service. However, the designations of telephone tariffs are largely descriptive in nature because they are intended to provide orientation in the ‘tariff jungle’. In such an exercise, the BGH wanted to assume that the public would notice the slight deviation, so that the sign would not lack any distinctive character.^[11] In fact, however, ‘City Plus’ is plainly descriptive for a telephone tariff and therefore not protectable.
In more recent practice, there are also often signs that are based on internet addresses. In these cases, the combination of a descriptive term with a top-level domain (such as.eu or.de) is generally devoid of any distinctive character. This is because the top-level domain also contains only a – usually regional – factual statement.
For example, the sign ‘http://www.cyberlaw.de’ for business, tax and legal advice services is devoid of any distinctive character. The embedding of the descriptive word ‘cyberlaw’ in the form of a typical domain in the sense of ‘Internet law’ does not make the sign a reference to origin.^[12] ‘suchen.de’ is also without distinctive character for vending machines, office supplies and business management.^[13] ‘PHOTOS.COM’ lacks distinctiveness for photo-related products such as software, data carriers or printed matter.^[14] Even the trade mark ‘RadioCom’ was not registrable overall for radio-related products, despite the absence of a full stop before the element ‘Com’, because of the capitalisation of the letter ‘C’.^[15]