The third prerequisite for trademark capacity is the sign's capability of distinguishing. This means the basic ability of a sign to distinguish the products of one company from those of other companies. In this respect, it is sufficient if it cannot be ruled out that there are situations in principle in which the sign indicates the origin of the products of an undertaking.^[1] In contrast to the examination of the (concrete) distinctiveness of the trade mark pursuant to Art. 7 I lit. b EUTMR or Sec. 8 II no. 1 MarkenG,^[2] the examination of the capability of distinguishing in the context of trademark capacity is not based on the specific products claimed under the trade mark.^[3] The capability of distinguishing is therefore also referred to as 'abstract distinctiveness'.^[4]
The shape of a product can also have a distinctive character. There are situations in which the shape of the goods can indicate the origin of the goods or services of an undertaking. Art. 3 TMD does not distinguish between different categories of trade marks. The shape of the goods for which the sign was registered does not have to have an arbitrary addition, such as an ornament without functional significance.^[5] Contrary to the case law of the Federal Court of Justice,^[6] this also applies to the prototype of a product - such as a sports car; because the prototype can of course also have a capability of distinguishing for completely different products. A colour^[7] or a portrait of a person^[8] can respectively also have the capability of distinguishing.
Recent supreme court rulings have practically never denied an abstract capability of distinguishing. As a rule, word marks in particular will be capable of distinguishing,^[9] even to the extent that exceptions have been discussed for words such as 'Preis', 'super', 'prima', 'extra',^[10] 'ultra', the capability of distinguishing is likely to be affirmed. These words are also conceivable in situations in which they refer to the origin of the products of an undertaking.^[11]
Thus, designations that refer to authorities or government agencies, such as the designation "Swiss Army', may also be capable of distinguishing. This is not precluded by the fact that the name refers to an authority or government agency. The public is aware that government bodies - including those of the public administration - sell goods (e.g. books, software, maps) or supply services to third parties. ^[12]