The registered trade mark grants its owner an exclusive right for certain goods and services, which enables him to monopolise the registered sign as a trade mark for an unlimited period of time.^[1] The possibility of registering a trade mark must therefore be subject to restrictions that take into account certain public interests of the general public.^[2] The legal basis for these restrictions, known as absolute grounds for refusal, are essentially the provisions of Art. 4 TMD, Art. 6quinquies Paris Convention, Art. 7 EUTMR and § 8 MarkenG.^[3] The seventh recital of the TMD states that the grounds for refusal are listed exhaustively in the Directive,^[4] with Art. 4 I TMD containing mandatory and Art. 4 III TMD optional requirements. Two objectives can be identified here: on the one hand, the prevention of monopolisation associated with the exclusive right under trade mark law and, on the other hand - of far less importance in practice - the prevention of the use of an unwanted sign in advance by prohibiting its registration.
Signs that cannot fulfil the function of origin as the main function of a trade mark should therefore not be monopolised. These are trade marks which have no distinctive character,^[5] which are capable of describing the characteristics of the products claimed^[6] or which designate the products themselves.^[7]
For example, the registration of trade marks 'diesel' or 'car' for the product group 'motor vehicles' or 'French' for 'wines' is not permitted so that the designations can continue to be used by other market participants. It will also not be possible to obtain trade mark protection for the realistic representation of a standard bottle for the product group 'mineral waters'.
Furthermore, the theoretically possible monopolisation of such industrial property rights, which - like patents or design rights^[8] - are only granted for a certain period of time via trade mark law, is to be prevented, so that aesthetic or technical designs in particular may be excluded from trade mark protection.^[9] In the case of certain geographical indications, obstacles to registration also prevent them from being monopolised as trade marks.^[10] Finally, the monopoly right conferred by the entry in the register may also be unjustified if the applicant has applied for registration of the trade mark in bad faith.^[11]
In contrast, protection against monopolisation is less important than the prevention of undesirable use in the case of signs that are contrary to public policy or immoral.^[12] For this reason, registration is prohibited in advance. The same applies respectively to signs capable of deceiving^[13] as well as signs containing official emblems, badges, emblems or coats of arms which are of public interest.^[14] Finally, the MarkenG also provides - without much practical significance - for a general prohibition of signs whose use may be prohibited under legal provisions other than those of trade mark law.^[15]
For example, the term 'Busengrapscher' for 'alcoholic beverages' cannot be registered as a trade mark because it violates human dignity.^[16] Furthermore, a trade mark depicting the German flag, for example, is not eligible for protection.
The individual grounds for refusal set out in Art. 4 TMD, Art. 7 EUTMR and Section 8 MarkenG are independent of each other and must therefore be examined separately.^[17] A sign is already excluded from registration as a trade mark if only one of the grounds for refusal applies.^[18] The same applies in invalidity proceedings.^[19]
For example, the examination of three-dimensional trade marks is not limited to the ground for refusal of Art. 4 I lit. e TMD, Art. 7 I lit. e EUTMR or Sec. 3 II MarkenG, which is essentially tailored to shape marks.^[20] Rather, all grounds for refusal must be examined. If one of them applies, the application must be rejected.
The application procedure at both offices is structurally particularly susceptible to erroneous decisions. While refusals must be justified, the registration decision does not require any justification. Studies from other legal contexts suggest that only a decision-maker who is sufficiently supplied with blood sugar is still willing to make decisions that require reasons; if the blood sugar supply is no longer sufficient for reasons, the decision-maker will intuitively make the decision that does not require reasons^[21] - i.e. register the trade mark.
In practice, this means that too many not protectable trade marks are registered without this being legally required. As an applicant, it is therefore regularly worth trying to re-register the same sign even in the case of one or more previous refusals.^[22]