In a decision dated October 27, 2016, the Federal Patent Court (case reference: 24 W (pat) 537/14) ruled that the term “EnergieMobil” 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 “EnergieMobil” as a trademark by the DPMA
In mid-2013, an entrepreneur applied to register the term “EnergieMobil” as a word mark at the German Patent and Trade Mark Office (DPMA). The application was to be filed for classes 35, 36 and 42. These classes cover areas such as advertising, business consulting, tariff consulting and the planning of lines in the fields of electricity, gas, water and telecommunications.
However, similar to the “Crunchy” case and the “Soft Cake” case, the application was rejected in a decision dated December 18, 2013 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 “EnergieMobil”
As grounds for the appeal, the Federal Patent Court stated that there was a lack of distinctiveness and that the absolute ground for refusal of protection of the need to keep the mark free also applied.
Section 8 para. 2 No. 1 MarkenG precludes registration as a word mark if the sign lacks any distinctive character.
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.
“EnergieMobil” is merely a descriptive term
According to the BPatG, the term EnergieMobil is composed of commonly known words. Moreover, the term as such is generally known. It is used for information/emergency vehicles that specifically travel to events to provide information on the subject of energy and energy supply on site.
With regard to the classes – in which the mark was to be registered – the designation merely served as a factual indication.
Thus, “EnergieMobil” merely designates a general mobile service provision site or a general place of service provision (“mobile”) in connection with a specific topic or specialist area (“energy”).
“EnergieMobil” stands for the provision of mobile energy
According to the applicant, however, the term should not only include the provision of mobile services in the field of energy supply, but should rather be understood as the provision of mobile energy.
However, the Federal Patent Court argues that the general understanding of “mobile” is in connection with a vehicle – an automobile. The average consumer knows combinations of terms such as “Büchermobil”, “Umweltmobil” or “Infomobil” exclusively as service and information vehicles.
Lack of binding effect of prior registrations
Finally, a different assessment of protectability does not result from the applicant’s reference to various previous registrations with the word element “Mobil”. Such prior registrations are not binding on the Federal Patent Court for the present decision on the protectability of the mark applied for.
We recommend prior verification of eligibility for registration
For all those who want to register a word mark, we recommend having the registrability checked in advance. In this way, unnecessary official fees and possible costs of appeal proceedings can be avoided and an alternative registrable brand name can be found in good time.