The German Patent Court recently helped the owner of a figurative mark to succeed with his complaint against the GPTO’s decision to partial cancellation concerning the protectability of the so called “walking GDR Ampelmännchen (the little figure at the traffic lights telling you it is safe to cross the road)” (see illustration).
The German Patent Court opposed the presence of grounds of non-registrability pursuant to § 8 II Trademark Act with the present mark being registered among others for the goods of class 16: printed matters, in particular magazines, newspapers, books, postcards; photographs; educational and teaching material (gadgets excluded). The Court based its decision on the following considerations:
Firstly, the absolute grounds of non-registrability pursuant to § 8 II no. 6 or 7 Trademark Act are no obstacle as the GDR Ampelmännchen for pedestrians as a common traffic sign was neither a national emblem nor a certification mark.
Furthermore, the walking Ampelmännchen is no classification mark according to § 8 II no. 3 Trademark Act that has become customary in common parlance or by established practices of naming the specific goods, as a necessary customariness with reference to the specifically claimed goods of class 16 was not obvious.
With regard to the necessary distinctiveness according to § 8 II no. 1 Trademark Act concerning goods and services and in view of the related public, the German Patent Court explained that with regard to the specific goods, the Ampelmännchen does not comprise any descriptive conceptual content in the foreground of comprehensiveness and that to that effect, it is dependent on an examination on a case-by-case basis. It was decisive that the mark contains elements typically having a properties-determining effect for the specifically claimed goods. It is, however, not sufficient for a descriptive effect of a mark to convey a content or has got a history such as the GDR Ampelmännchen.
An availability to be preserved for the mark according to § 8 II no. 2 Trademark Act was rejected by the German Patent Court on the grounds that the Ampelmännchen not provide any clear indication regarding the content and kind of goods of the media sector, so that the illustration of the Ampelmännchen is no indicative of a specific content for the referred public but could principally mean everything. An availability to be preserved would also not be justified by assuming that the sign is a cultural artefact.
A violation of the public order or morals according to § 8 II no. 5 Trademark Act could not be concluded from the Ampelmännchen, as the Ampelmännchen with the claimed goods is not understood to be directly connected with the injustice system of the GDR.
A bad faith according to § 8 II no. 10 Trademark Act on the part of the trademark owner was not obvious as the application of a so-called stock trademark for ensuring a future trademark requirement in the frame of the competition and with the aim of fostering the own business was covered with the admissible means. Criteria such as aquis and business interest should be put in correlation in order to decide on bad faith.
German Patent Act, September 27, 2012, file no.: 27 W 8pat) 31/11
Author: Janina Lorenz (Attorney-at-Law), Update 2/2013
Patent Attorneys and Lawyers Bockhorni & Kollegen
Munich/ Germany
www.patguard.de
