In a decision dated November 2, 2016, the Federal Patent Court (case reference: 24 W (pat) 556/16) ruled that the term “Soft Cake” was not registrable. The term lacked distinctive character (Sections 8 (2) No. 1, 37 (1) MarkenG) and, furthermore, the absolute ground for refusal of protection of the need to keep the term free (Sections 8 (2) No. 2, 37 (1) MarkenG) applied.
Rejection of “Soft Cake” as a brand
In mid-2015, a food manufacturer applied to register the term “Soft Cake” 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).
Similar to the “Crunchy” case, however, the registration was rejected 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 mark “Soft Cake”
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.
In particular, 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.
“Soft cake” is merely a descriptive term
“Soft cake” is a widely used word in the English language with the meaning “soft/tender” and “cake/biscuit”. With regard to the class of goods in which the word mark should be registered, the term describes in particular soft cakes. The term preferably serves as a factual indication of the type and nature of the goods.
The term “soft cake” is also often used for the small flat cakes made from soft dough with a fruit filling and chocolate coating.
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 would have a need to be kept free in relation to competitors on the market.
Simple English terms are mostly descriptive
The ruling of the Federal Patent Court shows that even terms from the English language, which are quite common in the German language, can be assumed to have a strongly descriptive character. If this is the case, registration as a trademark is often ruled out due to the need to keep the term free and the lack of distinctiveness.
In the opinion of the court, the average German consumer’s foreign language skills with regard to English, the language of world trade, can certainly not be considered poor. It can be assumed that the term “Soft Cake” is understood to be descriptive and not as a trademark designation.
Prior verification of eligibility for registration
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 costs of appeal proceedings can be avoided and an alternative registrable brand name can be found in good time.