In a decision dated November 2, 2016, the Federal Patent Court (case reference: 24 W (pat) 558/16) ruled that the term “CRUNCHY” was not registrable. The term lacked distinctive character (Sections 8 (2) No. 1, 37 (1) MarkenG) and the absolute ground for refusal of protection of the need to keep the term free (Sections 8 (2) No. 2, 37 (1) MarkenG) applied.
“Crunchy” as a brand
At the end of 2015, a food manufacturer applied to register the term “CRUNCHY” as a word mark at the German Patent and Trade Mark Office (DPMA). The application was to be filed for Class 30 (fine bakery products; fine confectionery; cookies; chocolate bars; wafers).
Refusal of registration
However, the registration was rejected in a decision dated February 12, 2016 with reference to the lack of distinctiveness and the need to keep the mark free. The subsequent appeal before the Federal Patent Court was unsuccessful.
No distinctive character for the trademark “Crunchy”
In its reasoning in the appeal, the BGH stated that there was both a lack of distinctiveness and, in addition, that the absolute ground for refusal of protection of the requirement of availability applied.
Section 8 para. 2 No. 1 MarkenG precludes registration as a word mark if the sign lacks any distinctive character.
“Distinctiveness is the capacity of a sign to identify the goods or services covered by the application as originating from a particular undertaking and thus to distinguish those goods and services from those of other undertakings”
However, designations that contain a descriptive term have no distinctive character. This applies all the more if the descriptive term is typical for the designated product group.
“Crunchy” is merely a descriptive term
“CRUNCHY” is a widely used word in the English language with the meaning “crispy, crunchy”. With regard to the class of goods in which the word mark was to be registered, the term describes the crispy consistency or the crunchy mouthfeel of the goods.
The term “crunchy” is also predominantly used to describe foodstuffs and is also a very common term in the German language. For example, “crunchy chocolate bars”, “crunchy muesli” and various “crunchy recipes” are offered on the market.
Requirement of availability for descriptive terms
Thus, due to the highly descriptive term, there is a lack of distinctiveness from other trademarks. In addition, such a descriptive term has a need to be kept free in relation to competitors on the market.
English terms can also be descriptive if they are commonly used
The ruling of the Federal Patent Court shows that a strongly descriptive character can also be assumed for terms from the English language that are quite familiar in the German language. If this is the case, an application for registration as a trademark is often ruled out due to the need to keep the term free and the lack of distinctiveness.
We recommend that anyone wishing to register a word mark should have its registrability checked in advance. In this way, unnecessary application fees and possible court costs can be avoided and an alternative registrable brand name can be sought in good time.