Tuesday, 25 November 2014
A recently published decision by the German Federal Supreme Court (BGH) concerning the registrability of acronyms as trade marks (case reference I ZB 64/13, "ECR-Award", of 22 May 2014, see here in PDF) was quite widely reported (here, here, here) by German legal commentators since it indicates that the highest German court in civil matters is more generous than both the DPMA and the
German Federal Patent Court when it
comes to deciding on the registrability of a trade mark.
In its decision, the BGH held that, when deciding whether a trade mark consisting of an acronym lacks distinctiveness and is therefore not registrable as a trade mark, it was crucial to establish whether the relevant consumers regarded the sign itself as a descriptive term or as an acronym. So far so good. However, now for the more 'contentious' part: when determining the view of the average consumer or the "understanding of the relevant circle" (Verkehrsverständnis), the judges took the view that this could not be determined by reference to the specification covered by the mark, but solely by reference to the sign itself.
Applying this to the case and trade mark in question: "ECR-Award" covering services in class 41 (in the German original: "Organisation und Durchführung von Preisverleihungen für Manage-mentleistungen, insbesondere im Bereich Efficient Consumer Response, die intelligente Kooperation zum Nutzen der Konsumenten"), the BGH took the view that (German) consumers would not be in a position to understand the acronym "ECR" as a acronym of the English language term "Efficient Consumer Response" without reference to the class 41 specification covered. The judges explained that the average consumer was usually not aware of scope of a trade mark specification and could therefore not conduct an analysis of the goods and/or services covered. Consequently, the trade mark "ECR-Award" disagreed with the DPMA and T was not lacking distinctiveness for the services covered in class 41 and disagreed with the differing assessment by the DPMA and the German Federal Patent Court, which had both had done exactly that - found that the mark ECR-Award was lacking distinctiveness for the services covered in class 41.
Merpel cannot help but feel for the Examiners. How are they meant to assess distinctiveness if they cannot refer to the specification. Consumers may not be aware of the exact specification as filed but they are faced with the services in question as offered under the trade mark, which should in an ideal world reflect what is covered by the specification, nein? Is Merpel overcomplicating things and/or missing the point?