In its decision of December 21, 2016 (Ref.: 26 W (pat) 57/16), the Federal Patent Court found that the refusal to register the figurative mark “Wacholder” was lawful. The sign applied for was merely an indication for a juniper schnapps, which is usually only referred to as “juniper” in trade.
Rejection of the application
On June 23, 2014, a company attempted to register the word and figurative mark “Wacholder” with the German Patent and Trade Mark Office (DPMA). However, the application was rejected by decision dated March 31, 2016 with reference to the need to keep the mark free (Sections 37 (1), 8 (2) No. 2 MarkenG).
In the application, the sign “Wacholder” was graphically represented in a typical Fraktur font. In addition, the letters “W”, “d” and “r” were provided with small loops. In addition, the letter “h” was extended downwards to such an extent that it contributed to underlining the entire word. The figurative mark was to be registered for class 33 of the register; spirits.
No trademark protection for “juniper”
The appeal lodged with the Federal Patent Court was rejected in its entirety. This was because registration was prevented by the absolute ground for refusal of lack of distinctiveness (Section 8 (2) No. 1 MarkenG). The reason for this was that the relevant public could not recognize any indication of origin from a specific company in the word mark “Wacholder” due to the factual statement it contained.
Lack of distinctiveness of the term
In principle, the main function of a trade mark is to ensure the identity of origin of the designated goods. Only the absence of any distinctive character constitutes an absolute ground for refusal. Thus, according to the Federal Court of Justice, any distinctive character, however weak, is sufficient to overcome the ground for refusal. Word signs therefore have no distinctive character if they consist of common words or phrases for the product.
In common parlance, the term “juniper” refers to a cypress plant. The berries are used for the production of various spirits. According to Duden, the word “juniper” – in addition to the term for cypress plants – is also used to describe juniper brandy. Thus, the name applied for only describes the raw material or the flavor for several goods that fall under the term “spirits”. It therefore lacks distinctive character.
No special graphic features justifying distinctiveness
Although this distinctiveness could in principle also be achieved by the graphic design of the mark, this was not the case here. According to the BPatG, the graphic design is very similar to the Microsoft word computer font “OLD English Text MT”. The additional loops of the claimed figurative element are only rather inconspicuous ornaments which are not capable of conveying an unusual impression. Also, the shorter length of the letter “h” is only a typical feature of a Fraktur font.
The term “juniper” was therefore only a descriptive indication. In addition, the pictorial design does not constitute a special feature beyond what is customary in advertising. The decision to refuse the application only relates to the category of spirits. Nevertheless, a different decision is quite possible for the application of the trademark “juniper” in other classes, such as the class of furniture or services. In contrast to the “spirits” class, the term “juniper” could have distinctive character here.