Janina Lorenz
Based on a complaint by a trademark applicant, the German Patent Court decided at the end of last year that a slogan that is principally capable to be distinctive and hence registrable loses its protectability when, at the point in time of decision on registration, the slogan represents an advertising medium in line with the industry standards.
The German Patent Court had to decide on the distinctiveness of the German slogan “Aus Akten werden Fakten” as a trademark for goods and services in the sector of IT based contract management. The German Patent Court determined that no stricter demands on the assessment of distinctiveness of word sequences or slogans than on other wordmarks should be placed and that in particular, no special imagination or outstanding effect of surprise or identification needs to be contained in the word sequence. In the present case, the public needed to invest a certain interpretation and thinking process in order to get to the descriptive conceptual character for IT-based file management, which is why generally, the distinctiveness of the slogan that rhymes in the German language cannot be denied due to the originality and conciseness.
The lacking distinctiveness would only arise by the fact that the slogan “Aus Akten werden Fakten” in connection with the goods and services in the sector of IT-based contract management is already commonly used as a slogan by other companies in a similar connection. Due to this common use by the high number of providers of contract management products, that use this slogan, an individual company perception of origin can no longer be created among the related public and a distinctiveness is therefore excluded.
BPatG, 29.10.2012, Az.: 30 W (pat) 40/11
Author: Janina Lorenz (Attorney-at-Law), Update 2/2013
Patent Attorneys and Lawyers Bockhorni & Kollegen
Munich/ Germany
www.patguard.de
