Trademark capacity refers to the fundamental suitability to constitute a (registered) trade mark, irrespective of the goods or services for which protection could be sought.^[1] In contrast, the examination of whether a sign that is in principle capable of being a trade mark can be registered for the specific products claimed is carried out as part of the examination of absolute and relative grounds for refusal.^[2] Trademark capacity is therefore to be examined independently of any possible market penetration^[3].^[4] European^[5] legal bases for the trademark capacity of registered trade marks are Art. 3 and 4 I lit. a TMD^[6] and - to be interpreted in the same way^[7] - Art. 4 EUTMR. In an effort to combine the regulations for registered and unregistered trade marks^[8] as far as possible in common provisions, the German legislator has deviated from the European system and has divided the requirements for trade mark capacity into two provisions (Section 3 I^[9] and Section 8 I MarkenG).^[10]
The trade mark capacity of registered^[11] trade marks is linked to three requirements. Firstly, it must be a sign. Secondly, this sign must be clearly and precise identifiable. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.^[12]
In contrast, the applicant's intention to use the trade mark is not a prerequisite for trademark capacity. The TMD - unlike American law, for example - does not recognise a requirement of the intention to use the trade mark, but instead ensures a reduction in the number of registered trade marks by sanctioning prolonged non-use.^[13] Despite these requirements, the Federal Court of Justice does not assume without difficulty that the intention to use is a general protection requirement for the creation of a trade mark right. This follows from the nature of the trade mark as a distinctive sign. However, it is sufficient to have a general intention to use the trade mark, which is directed towards its own use or use by third parties and is also rebuttably presumed.^[14] Furthermore, the Federal Court of Justice does not conclude from the requirement of an intention to use that a trade mark applied for without an intention to use it is invalid; rather, the trade mark can at most be attacked under the aspect of bad faith or immoral application or an attack from the trade mark can be abusive.^[15]
Art. 3 TMD and Art. 4 EUTMR mention in particular words, including personal names,^[16] images, letters,^[17] numbers and the shape or packaging of a product as signs with trademark capacity.^[18] The word 'in particular' in the legal text indicates that the list is not exhaustive.^[19] Section 3 I MarkenG respectively also mentions three-dimensional designs and sound signs. However, it must be taken into account that Art. 3 TMD conclusively regulates the requirements for the trademark capacity of registered trade marks,^[20] so that these signs are also only eligible for trade mark protection if they fulfil the three requirements of Art. 3 TMD.
In practice, word marks^[21] and word/figurative marks - consisting of a combination of words and images - are by far the most important, followed by purely figurative marks. In addition, a smaller number of three-dimensional trade marks have become established, with the help of which companies often attempt to obtain direct protection for their product design (such as the shape of Toblerone chocolate). There are also a few sound marks (such as Deutsche Telekom's jingle) and so-called abstract colour marks (Milka purple), which are used to claim protection for a colour or combination of colours independently of a specific product design. Finally, the number of position marks,^[22] in which a certain feature is always applied to a certain position of the product (such as the red stripe in the paragraph of Lloyd shoes or the button and flag in the ear of Steiff stuffed animals), is very small. The trade mark forms of the olfactory mark, taste mark, tactile mark^[23] or motion mark^[24] are practically meaningless to date and of more academic interest.