Background

AS applied to register the mark #darferdas? (“Can he do that?” in German) as a trade mark in connection with “Clothing, in particular tee-shirts; footwear; headgear”. The German Patent and Trade Mark Office (DPMA) raised a distinctiveness objection on the basis that the mark was a simple interrogative phrase.

Consumers are not typically in the habit of interpreting promotional/advertising phrases as badges of trade origin (unless they have been exposed to extensive use of the mark by the owner of the slogan). Marks containing hashtags (#) can be seen as a type of slogan, and can be found to be inherently non-distinctive.

AS appealed to the Federal Court of Justice (Bundesgerichtshof). According to German case law, it is not necessary for every conceivable use of a sign to be considered “trade mark use”. Rather, it is sufficient that a particular manner of use is plausible and for there to be practically significant possibilities for using the sign in a way which a consumer would interpret as a trade mark. For instance, in the clothing sector the use of the sign can appear on the front of clothing, as well as on the label sewn into garments.

The Bundesgerichtshof sought clarification as earlier case law (in particular, Deichmann v OHIM, C-307/11P) suggested that only the most likely types of use should be considered by the examining office.

Question from the Bundesgerichtshof

The question referred to the CJEU was: “Does a sign have distinctive character where there are in practice significant and plausible possibilities for it to be used as an indication of origin in respect of goods or services, even if this is not the most likely form of use?” (emphasis added)

In answering the question, the CJEU reiterated that distinctiveness should be assessed by taking account of consumer perception and all the relevant facts and circumstances. It acknowledged that an applicant does not need to indicate or know precisely how their mark will be used at the time of filing an application (taking account of the five year non-use grace period to enable applicants to decide how they will use their marks). As a result, the relevant trade mark offices usually have to make a judgment call based on the way marks are typically used according to the customs of the relevant sector of goods/services.

With this in mind, the CJEU stated that the relevant trade mark office, when considering distinctiveness, has to consider likely uses of the mark and the way it will probably be shown to the average consumer. Further, consideration does not need to be given to types of use which are not practically significant in the relevant sector of goods/services and therefore seem unlikely, except where the applicant provides evidence showing examples of use which makes that otherwise unusual use in the sector more likely. In other words, the offices are not obligated to consider every conceivable type of use, only those which are likely or where examples of alternate use have been provided by the applicant.

The CJEU went on to state: “It is for the national court having jurisdiction to determine whether the average consumer, when he sees the sign #darferdas? on the front of a tee-shirt or the label places on the inside of it, will perceive that sign as an indication of the commercial origin of the item and not simply as a decorative element or social message”. (Paragraph 31.)

Summary

The case looks at the generally accepted customs in the clothing sector – placement of marks on the exterior of goods, as well as on labels sewn inside them. These two types of use can be considered practically significant in that sector. Consumers viewing the former type of use would probably consider it to be decorative (and inherently non-distinctive), whereas the latter type would be more likely to be viewed as an indicator of origin. Trade mark offices have to decide whether the average consumer viewing the mark, taking account of those uses, would perceive it as a trade mark.

The ruling is applicable to all types of trade marks (not just slogans or ’#’ marks) and indicates that an applicant can provide (and the examining office should consider) examples of how their mark will be used with a view to improving the chances of obtaining registration. This does not necessarily mean that obtaining registration in borderline cases will be easy going forward, but it does suggest a potential shift in examination practice in favour of the trade mark applicant.