German Federal Patent Court decides in "POST II"

A slightly delayed delivery (to our readers) of some good news for Deutsche Post, Germany's equivalent of the Royal Mail. Several German websites recently reported that the German Federal Federal Patent Court (Bundespatentgericht) decided in favour of the Deutsche Post's appeal against the cancellation of its trade mark for "POST".

The background: back in 2003 Deutsche Post had applied for a trade mark registration for the mark "POST" covering different services in connection with postal services. Several of Deutsche Post's competitors later filed for a cancellation of the mark, inter alia, citing descriptiveness objections under § 8 (2) No. 2 MarkenG (German Trade Mark Act). The German Trade Mark and Patent Office (DPMA) subsequently cancelled the mark. After the Federal Patent Court had initially confirmed the cancellation, Deutsche Post appealed this matter all the way to the German Federal Supreme Court (Bundesgerichtshof). The Bundesgerichtshof, however, decided in favour of Deutsche Post's appeal and sent the case back to the Federal Patent Court for a final decision which in turn has now decided the case in Deutsche Post's favour.

Trying to find the actual decision, this Kat has found a press release issued by the Federal Patent Court concerning this case which consists of the headnotes of "POST II" as the case has been aptly named. Please find this Kat's strictly unofficial translation of the headnotes below.

1. To prove 'use as a trade mark' for a service mark, it can suffice to apply a work mark in and on a business premise.

2. The application of the word "POST" at the entrance of a business premise and on sale counters inside a business premise does not only constitute use as a business name (firmenmäßige Benutzung) but also constitutes use as a trade mark in relation to the delivery and transport services offered [at that business premise].

3. Having regard to the Bundesgerichtshof's precedent (GRUR 2009, 669 pp., No. 28 - POST II) a degree of more than 75% attribution in a market survey to the business of the trade mark owner concerning transport and delivery services is to be regarded as sufficient for proving acquired distinctiveness of the sign POST in the sense of Article 8 (3) German Trade Mark Act, which was per se capable of being descriptive.

4. If the deciding senate is convinced that there are no legal or factual doubts concerning the correct method and content of a market survey that has been commissioned, then that survey is suitable to prove acquired distinctiveness of a trade mark in trade. In such a case there is no need - also not according to the principle of official investigation - to commission a further market survey during cancellation proceedings. Rather, the cancellation applicant has to adduce counter-evidence concerning the falsity of the market survey and, where appropriate, has to commission and submit a further market survey.

Case reference 26 W (pat) 24/06 "Post II", order of 28 October 2010. Case references of parallel proceedings 26 W (pat) 25/06, 26 W (pat) 26/06, 26 W (pat) 27/06, 26 W (pat) 29/06 and 26 W (pat) 115/06.