The grounds for refusal of the lack of distinctive character, descriptive indications and common usage^[1] are mitigated by the provisions of Art. 4 IV TMD, Art. 7 III EUTMR and § 8 III MarkenG. These provisions provide that a sign can obtain a distinctive character as a result of its use, which it did not originally have, and can therefore be registered as a trade mark.^[2] German law (Section 8 III MarkenG) calls this - without distinction as to the substance - ‘enforcement’. The sign thus acquires through its use the distinctive character which it did not have immediately^[3] and which is a prerequisite for its registration.^[4] Obtaining a distinctive character through use does not create an autonomous right to registration of a trade mark.^[5] Rather, it contains an exception to certain grounds for refusal and must therefore be interpreted in relation to these grounds for refusal.^[6] The decisive factor here is therefore also the factual^[7] assessment of whether, from the point of view of the relevant public,^[8] the trade mark is capable of identifying the claimed product as originating from a particular undertaking and thus distinguishing this product from those of other undertakings.^[9] Such distinctiveness can arise in particular after a normal process of familiarisation by the relevant public.^[10]
For example, a geographical name can be registered as a trade mark if, as a result of its use, it has become capable of indicating origin. In such a case, the geographical name has acquired a new meaning that is no longer merely descriptive, which justifies its registration as a trade mark.^[11] If, on the other hand, a sign is only understood as an indication of belonging to a certain group of companies, but not as an indication of the origin of a product from a very specific company, this cannot be used to establish distinctiveness.^[12]
The extent to which there is an interest in keeping the name in question free for use by other companies plays no role in the examination of obtaining a distinctive character through use. However, the specific character of the name must be taken into account.
For example, a very well-known geographical name can only acquire distinctiveness through use if there is a long and intensive use of the trade mark by the company applying for registration. In the case of a name that is already known as a geographical indication for a certain group of goods, an undertaking applying for registration for a product in the same group must, a fortiori, demonstrate a particularly long and intensive use of the trade mark.^[13] If, however, geographical indications are commonly used as an indication of origin in a sector - for example in the field of mineral waters or beers - the requirements may be less stringent.^[14] Even in the case of the name ‘Kinder’ (children), which is plainly descriptive of the consumer groups for confectionery, it must be assumed that the trade mark must be almost unanimously recognised by the public.^[15] In contrast, the shapes of new motor vehicle models regularly acquire distinctiveness shortly after their market launch, as the interested public registers the unfamiliar shape of a new model.^[16]
Whether distinctiveness resulting from the use of a sign exists can only be determined in relation to the products labelled with it.^[17] If the public knows a certain name as a trade mark for certain products, it may also tend to see the name as a trade mark for other, possibly related, products.^[18] In particular, an economic approach must be taken, taking into account the legitimate interests of the trade mark proprietor.^[19] In the case of a broad generic term, which covers a large number of product areas that differ in terms of purpose and target group, it is necessary that there is a sufficient degree of enforcement for the individual product subgroups covered by the generic term.^[20] Individual evidence is also not required if it is established that several services of different types are typically supplied by one undertaking and that the relevant public, when using the most important of these services, also expects the provision of these other services.^[21]
However, the intensive use of a clothing trade mark, for example, does not automatically mean that this trade mark has now also obtained a distinctive character for drinks and can be registered.^[22] On the other hand, the term ‘ready-made cakes’ used in the list of goods and services is already so narrow that obtaining a distinctive character for ‘cream slices’ alone would be sufficient to justify registration for the term ‘ready-made cakes’.^[23]
Obtaining a distinctive character through use must be based on the use of the trade mark as a trade mark,^[24] i.e. its use as a sign to distinguish products. The mere sale of a product with the same design is not sufficient.^[25] In particular, not every use of the trade mark, and certainly not every use of a two-dimensional representation of a three-dimensional trade mark, necessarily constitutes use as a trade mark.^[26]
If, for example, a market participant was the sole supplier of certain goods on the market, extensive use of a sign consisting of the shape of those goods may be sufficient if, as a result of that use, a substantial part of the relevant public perceives an indication of origin from the shape.^[27] Especially in such cases of a monopoly position, however, it must be carefully examined whether the public associates the indication in question with the supplier without at the same time seeing an indication of origin in it.^[28] If, for example, a very specific - unpackaged - chocolate mould is known to the public, use as a trade mark is likely even if the product is normally sold packaged.^[29] Even the sale of printed products under the same name does not necessarily lead to trade mark recognition if the name can be understood by the public as a description of the contents.^[30]
The use of a colour in advertising or on the goods or their packaging can only be assumed as a trade mark in exceptional cases. In many product and service sectors, the relevant public is not accustomed to identifying an indication of origin from the use of a colour in advertising or on the packaging of goods without the addition of graphic elements or verbal elements, because a colour as such is generally not used to identify the origin of a particular undertaking, but only as a design element. However, an exception to this principle can be considered if the public is accustomed to the use of colours as a means of identification due to labelling habits in the goods or services sector in question.^[31]
For example, the long-standing and consistent use of the colour yellow by Langenscheidt in the entire product segment of dictionaries in print form speaks in favour of its use as a trade mark. The fact that the colour is used together with other signs does not preclude the assumption of trade mark use.^[32] In contrast, the total sales of Coca-Cola products cannot prove the use of a specific Coca-Cola bottle shape if it remains unclear in which packaged form the products were distributed.^[33]
The term ‘use of the trade mark as a trade mark’ must be understood to refer only to use of the trade mark which serves to identify the goods or services as originating from a particular undertaking by the relevant public.^[34] According to the case law of the BGH,^[35] even use in the form of a title is not sufficient^[36] - questionable because use in the form of a title is not a category of harmonised law. On the other hand, use as part of an internet address can also refer to the products offered there and thus constitute use as a trade mark.^[37] The use of a company name can also constitute ‘use as a trade mark’ if the company only uses a sign, which therefore always refers to the products offered.^[38]
If, for example, the name ‘BATEAUX MOUCHES’ (= tourist boat) is used descriptively in advertising brochures, even the most intensive use cannot constitute trade mark use.^[39] On the other hand, the use of a website ‘bet365.com’ as a relevant marketing channel for the products in question can constitute use as a trade mark.^[40]
Such identification, and thus obtaining a distinctive character, can result both from the use of a partial component of a registered trade mark and from the use of another trade mark in conjunction with a registered trade mark.^[41] In this context, the applicant must prove that the relevant public perceives the goods or services identified solely by this trade mark - and not by any other existing trade marks - as originating from a particular undertaking.^[42] The BGH therefore requires specific proof - preferably by means of a market survey - that the part in question has also acquired distinctive character.^[43] At the very least, it must be established that both parts of the sign are perceived by the public as independent signs.^[44] These principles also apply to the basic part of a series of signs.^[45]
For example, the use of the slogan ‘HAVE A BREAK. . . HAVE A KIT KAT’ can render the isolated element “HAVE A BREAK” distinctive.^[46] The trade mark “bet365” can also obtain a distinctive character if it is sometimes used in combination with the word elements “bingo” or “.com”.^[47] However, if the descriptive term ‘BSS’ in the sense of ‘Balanced Salt Solution’ is used in brochures for the products ‘ALCON BSS’ and ‘BSS PLUS’, this is rather an indication that the term ‘BSS’ is not sufficiently distinctive on its own without any other additional identifying element.^[48] Even if the sign ‘INFOSECURITY’ is always used in advertising with the addition ‘EUROPE’, this does not result in obtaining a distinctive character due to the change in meaning.^[49] In contrast, a three-dimensional trade mark may also acquire distinctive character through use if it is used in conjunction with a word mark or a figurative mark.^[50] In particular, embellishments of a figurative mark may also be secondary to the overall impression of the trade mark in such a way that the distinctive character is not affected. ^[51] However, especially in the case of a basic sign element used as an umbrella mark for various products - such as the sign ‘kinder’ by Ferrero - this element may have a certain independence and thus have obtained a distinctive character in itself.^[52] In contrast, the BGH did not allow the sign ‘T-’ of Deutsche Telekom to be registered without a market survey.^[53] The exclamation mark in the trade mark ‘JOOP!’ could also not be found to have a distinctive character precisely because of the well-knownness of the main mark.^[54]
In the case of a national trade mark, obtaining a distinctive character depends solely on the situation in the part of the territory of the Member State concerned in which the grounds for refusal have been found to exist.^[55] Accordingly, Article 7 (3) EUTMR requires, in the case of the EU trade mark, that the trade mark has acquired distinctive character through use in all those - substantial^[56] - parts of the EU in which a ground for refusal would be relevant. In principle, distinctive character must therefore be required throughout the EU.^[57] Only the states that were members of the EU at the time of filing are relevant in this regard.^[58] Paragraph (3) must be interpreted in the light of the principle of unitary character of the EU trade mark, which is reflected in the preamble and in Art. 59] Otherwise, one would also come to the paradoxical result that an applicant would have to prove that a national trade mark has been registered in the territory concerned, whereas an EU trade mark would be registered.^[60] Thus, even if the qualitative requirements for the type of use correspond to those for genuine use^[61], there is a difference between genuine use and proof of acquired distinctiveness with regard to the relevant territory.^[62]
In the case of word marks, the relevant territories are those in the EU where a large proportion of consumers speak the language in which the ground for refusal exists. Beyond that, however, those territories in which the relevant public has at least a passive knowledge of the language in question are not to be taken into account.^[63]
Thus, according to the GC's case-law, the relevant public for grounds for refusal in English is the public in Denmark, Ireland, Malta, the Netherlands, Finland, Sweden, the United Kingdom^[64] and Cyprus.^[65]
In the case of trade marks which are not word marks, on the other hand, it must be presumed that the assessment of their distinctive character is the same throughout the EU, unless there are concrete indications to the contrary.^[66]
It is true that it goes too far to require proof for each individual Member State^[67] if the evidence submitted, taken as a whole, allows the conclusion that distinctive character has been obtained in the EU.^[68]In any case, proof of use in only one Member State^[69] or in a significant part of the EU^[70]is not sufficient. However, evidence may also be capable of proving acquired distinctiveness in several Member States at the same time or even in the EU as a whole^[71], for example where, due to the geographical, cultural or linguistic proximity of two Member States, the relevant public of one Member State has sufficient knowledge of the goods or services existing on the national market of the other Member State.^[72] Nor is acquired distinctiveness established if no data is available for a territory consisting of Ireland, Denmark and the Netherlands.^[73] Even if market penetration has been proven for an area in which 90% of the EU population lives, this should - too strictly - not suffice as long as gaps in evidence remain in the states of Belgium, Ireland, Greece and Portugal.^[74] Nor can data from ten Member States be extrapolated to a further 17 states.[75] Evidence that does not originate from the protected territory, but e.g. from the USA, is normally of no value.^[76]
If a trade mark is devoid of distinctive character on the filing date, but acquires it at a later date, the trade mark can be registered with the priority of this later date with the consent of the applicant The German legislator has made use of the option of Art. 4 V TMD through Sec. 37 II MarkenG. One of the reasons for the cessation of a ground for refusal under Section 8 II Nos. 1, 2 or 3 MarkenG is that the trade mark has become established after the filing date.^[77]
If there is a long period between the filing date and the date on which a demoscopic expert opinion is prepared - for example 13 years - this generally excludes the assumption that the result of the expert opinion can be related to the filing date. Anything else can only apply in special cases subject to strict conditions. Such an exceptional case can be assumed if, in specific product areas, the products in question do not change rapidly, the market development can be reliably assessed over long periods of time and the circumstances in favour of market penetration are clear.^[78] The same applies if the market survey is confirmed by a subsequent survey with similar results.^[79]