Absolute barriers to refusal

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Absolute obstacles to protection are the collective term for numerous legal facts that prevent a sign from being entered as a trademark in the trademark register of the German Patent and Trademark Office . In contrast to this, there are relative obstacles to protection , which are priority trademark rights and other rights of third parties.

origin

Most of the absolute obstacles to protection standardized in the Trademark Act (MarkenG) go back to Section 4, Paragraphs 1 and 2 of the former Trademark Act (WZG), where they are listed in catalog form. In Section 5 (1) of the WZG, the legislature uses the term "obstacle to entry" with reference to Section 4.

Trademark Directive (Trademark Directive)

The current MarkenG was enacted on the basis of Art. 1 Trademark Law Reform Act (MRRG), which in turn is based on the Trademark Directive (MarkenRL) and implements it closely in accordance with national law. The absolute grounds for refusal are - again referred to as "grounds for refusal" - in Art. 3 Para. 1 lit. a to h and - optional - para. 2 lit. a to d of the Trademark Directive and have largely found their way into Section 8 Paragraphs 1 and 2 of the Trademark Act.

Absolute barriers to protection in the trademark law

The peculiarity of § 3 Abs. 2 MarkenG

It is noticeable that some of the absolute obstacles to protection cataloged in connection with Art. 3 Para. 1 Trademark Directive, namely those according to lit. e, are listed separately in Section 3 (2) of the Trademark Act. These are signs that are not amenable to trademark protection because they "consist exclusively of one form". The shape can

  1. "due to the nature of the goods themselves" or
  2. be "necessary to achieve a technical effect" or
  3. give "substantial value to the goods".

The reason for the removal from the general catalog of Art. 3 Para. 1 Trademark Directive is to be seen in the fact that the three reasons for exclusion of protectability in question should apply to the two trademark categories, namely on the one hand for the category of the trademark obtained through registration , § 4 No. 1 MarkenG, on the other hand, for the category of trademark protection (directly) acquired through traffic validity as a result of use , Section 4 No. 2 MarkenG.

The peculiarity of § 8 Abs. 1 MarkenG

This concerns the protection requirement of the graphic representability of a trademark form standardized in Art. 2 Trademark Directive. This protection requirement, formulated positively in the Trademark Directive, is implemented - negatively - in Section 8 (1) of the Trademark Act as an absolute barrier to protection . Nevertheless, the requirement of graphic representability is not an absolute barrier to protection, but an imperative requirement of trademark capability. The legislator of the trademark law was of the opinion that the requirement of graphic representability should not be regulated in connection with the trademark concept of § 3 MarkenG. Because it does not fit all three categories of brands to be distinguished i. S. v. Section 4 No. 1, 2 and 3 MarkenG. According to the system of the trademark law, the requirement of graphic representability only applies to registered and applied for trademarks.

Overcoming obstacles to protection, § 8 Abs. 3 MarkenG

A comparatively small part of the absolute barriers to protection listed in Section 8 (2) No. 1 to 10 of the Trademark Act can be overcome under certain conditions. The legal basis for this is Section 8 (3) of the Trademark Act, according to which a trademark is not excluded from being entered in the trademark register if it "decides on the registration as a result of its use for the goods or services for which it has been applied for , has prevailed in the relevant public ". However, this exception only applies to the types of trademarks listed in Section 8 (2) No. 1, 2 and 3 MarkenG. These are: a) Brands "which lack any distinctive character for the goods or services " (§ 8 Paragraph 2 No. 1), b) Brands that consist exclusively of descriptive information (§ 8 Paragraph 2 No. 2) , and c) trademarks that consist of generic names (Section 8 (2) no.3).

The lack of any distinctive character, Section 8 (2) No. 1 MarkenG

The highest court rulings understand distinctive character in the sense of § 8 Abs. 2 Nr. 1 MarkenG as the inherent suitability of a trademark to be perceived by the public as a means of differentiating between goods and services of a company compared to those of other companies. The wording of this definition largely follows the legal definition of Section 3 (1) of the Trademark Act. However, it should be noted that the above-mentioned standard speaks of suitability for differentiation . This is a general ( abstract ) ability of a label to distinguish goods or services from one company from those of other companies. If it is absent, this abstract ability to distinguish cannot be overcome by means of traffic enforcement . Rather, enforcement in accordance with Section 8 (3) MarkenG can only overcome the lack of specific distinctive character of the sign with regard to the goods or services it specifically covers . If (only) the specific ability of the registered trademark in question is missing , then it is the obstacle to protection (obstacle to registration) of Section 8 (2) No. 1 MarkenG, which - if necessary - can be overcome by means of public enforcement.

Descriptive information, Section 8 (2) No. 2 MarkenG

Under the collective term "descriptive information" are summarized according to § 8 Abs. 2 Nr. 2 MarkenG signs or information that are used in the traffic to designate the type, the quality, the quantity, the destination, the value, the geographical origin, the time of Manufacture of the goods or the provision of the services or to designate other characteristics of the goods or services. In principle, there is a need for market participants to keep such descriptive information free .

Generic names, Section 8 (2) No. 3 MarkenG

Section 8, Paragraph 2, No. 3 of the Trademark Act understands this to mean labels that consist exclusively of signs or information that have become common in common linguistic usage or in honest and constant traffic conventions for the designation of goods or services. Basically, the aforementioned signs or information, as well as the "descriptive information" explained above, are subject to a need to be kept clear.

(Further) requirements of Section 8 (3) MarkenG

use

The absolute obstacles to protection of Section 8 (2) No. 1, 2 or 3 MarkenG listed in detail above must have been overcome by using the (applied for) trademark for the registered goods or services. This must be a use of the mark as a mark in market competition, in which all functions of the mark that are significant under trademark law can be realized. Examples: Use in product sales as a distinguishing mark and / or in product or image advertising of the company. The duration of use is also essential , whereby use of the trademark over a longer period of time is required.

Enforcement in traffic

As a result of its (serious) use (see above), the registered trademark must have established itself as a distinguishing mark that identifies products or services. In fact, the implementation of the mark as a distinguishing mark for the identification of company products or services in transport , i.e. in market competition, must have been acquired.

Product reference

It is not enough that the trademark applied for has established itself in the market for any goods or services. Rather, the traffic enforcement must have been carried out exactly for those goods or services for which the registration of the trademark is requested. Accordingly, it is also not sufficient if the evidence of traffic enforcement for goods or services is provided in the area of ​​similarity of the goods or services registered.

Participating public

After all, the mark applied for must have prevailed "in the relevant public". Participating public within the meaning of Section 8 (3) of the Trademark Act are those circles in which the symbol is intended to be used or will have an impact . Accordingly, the relevant public is primarily the end customer of the goods or services concerned. However, not only the actual buyers, but also all potential consumers of the goods or services concerned come into consideration. However, in order to overcome the obstacles to protection of Section 8 (2) No. 1, 2 or 3 MarkenG by means of public enforcement, it is not sufficient if the registered sign has only prevailed in a comparatively small part of the public involved. Rather, the case law basically calls for a share of at least 50% of the public involved, which can, however, be well above this in the specific individual case to be decided.

Insurmountable obstacles to protection

General

The vast majority of the absolute obstacles to protection cannot be overcome. This applies in particular to the obstacles to protection listed in Section 8 (2) of the Trademark Act (exceptions: Section 8 (2) No. 1, 2 and 3 of the Trademark Act, see above), but also for the grounds for exclusion in Section 3 (2) and 8 Paragraph 1 MarkenG (see the explanations above).

The obstacles to protection of Section 8 (2) No. 4 to 10 of the Trademark Act

Deceptive trademarks, § 8 Paragraph 2 No. 4 MarkenG

According to the wording of the standard, trademarks are "excluded from registration that are likely to mislead the public, in particular about the type, quality or geographical origin of the goods or services". This is to protect the general public from deceptive brands. It is primarily aimed at consumers and competitors (the trademark user and applicant), which is made clear by the term "audience". Compare with the ruling practice of the German Patent Office (DPA) on Section 4 (2) No. 4, 2nd alternative, of the former WZG. The provision of Section 8, Paragraph 2, No. 4 of the Trademark Act, Art. 3 Paragraph 1 lit. g Trademark Directive implemented in German trademark law. At the same time, it also corresponds to Art. 7 Para. 1 lit. g Community Trademark Ordinance (GMarkenV). The enumeration of the chances of deception in § 8 Abs. 2 Nr. 4 MarkenG is not exhaustive, as indicated by the word "in particular". If a trademark that is not deceptive is "only" used in a misleading manner , Section 8 (2) No. 4 MarkenG is not relevant. However, there is then a violation of § 3 , § 4 and § 5 of the Act against Unfair Competition (UWG) due to anti-competitive effects.

Ordinary or immoral trademarks, Section 8 (2) No. 5 MarkenG

According to the aforementioned regulation, trademarks are "excluded from registration that offend against public order or morality ". Because of Section 8 (2) No. 9 MarkenG (see the explanations below), the concept of public order is to be interpreted narrowly so that it does not encompass the entirety of the legal system . Rather, "public order" within the meaning of Section 8 (2) No. 5 MarkenG is to be understood as "only" the principles that constitute the state and society, primarily the basic constitutional order. As far as immoral trademarks are concerned, the concept of morality - similar to the concept of public order - is to be applied with due restraint, i.e. to be interpreted narrowly so that there is no overlap with the offense of a violation of public order. A trademark is immoral if the content of the trademark seriously offends the moral, moral or ethical perception of wide public. Whether a trademark is against morality depends not only on the design of the trademark as such, but also on the goods and / or services for which it is registered.

State emblems and municipal coats of arms, Section 8 (2) No. 6 MarkenG

According to this provision, which goes back to Section 4 (2) No. 4 of the earlier WZG, trademarks are "excluded from registration that contain the state coats of arms , state flags or other state emblems or coats of arms of a domestic place or a domestic community or other municipal association" . The standard wants - in the public interest - to prevent state emblems from being abused commercially. In this respect, it is identical to Art. 6 ter para. 1 lit. a Paris Association Convention (PVÜ), which obliges the member states of this association to take suitable measures against such abusive trademarks. As far as municipal coats of arms is concerned, the purpose of the standard is to keep their heraldic design free for use by the municipalities or associations of municipalities that use the coat of arms in question, without having to fear third-party claims under trademark law. Even (non-identical) imitations of national emblems or municipal coats of arms are opposed to the protection barrier (prohibition of registration) of Section 8 (2) No. 6 MarkenG. This is determined by Section 8, Paragraph 4, Clause 1 of the Trademark Act.

Official test or guarantee marks, Section 8 (2) No. 7 MarkenG

According to this, trademarks are excluded from registration "which contain official test or guarantee marks that are excluded from registration as a trademark according to an announcement by the Federal Ministry of Justice in the Federal Law Gazette". The regulation is based on Section 4 (2) No. 3 of the earlier WZG and otherwise corresponds to both Article 3 (1) lit. h Trademark Directive as well as Art. 6 ter lit. a PVÜ. Official test or guarantee marks are the officially prescribed marking of the testing of a product for compliance with certain requirements. However, according to Section 8 (2) No. 7 MarkenG, a trademark is only excluded from being entered in the trademark register "if the goods or services for which the trademark has been applied for match the goods or services for which the test or guarantee mark is introduced ", either" identical or similar to them ", Section 8 (4) sentence 3 of the Trademark Act. The absolute barrier to protection of Section 8 (2) No. 7 MarkenG also applies to trademarks that contain (non-identical) imitations of official test or guarantee marks, Section 8 (4) sentence 1 MarkenG. The term "imitation" is about reproductions in the heraldic sense.

Names of international intergovernmental organizations, Section 8 (2) No. 8 MarkenG

According to the aforementioned regulation, trademarks are excluded from registration, "which contain coats of arms, flags , or other marks, seals or designations of international intergovernmental organizations that are excluded from registration as a trademark according to an announcement by the Federal Ministry of Justice in the Federal Law Gazette". The above standard is derived almost word for word from § 4 Paragraph 2 No. 3 a of the earlier WZG and corresponds to Art. 3 Paragraph 1 lit. h Trademark Directive. The regulation also corresponds to Art. 6 ter para. 1 lit. b PVÜ, which obliges the member states to reject the registration of trademarks of the type in question and any imitation in the heraldic sense as factory or trade marks or as part of such or to declare them invalid, as well as to prohibit the use of these marks by taking appropriate measures, if the competent authorities have not permitted its use; exceptions are coats of arms, flags and other marks, seals or designations that were already the subject of international agreements in force that guaranteed their protection. However, the provision is not directed against holders of rights that were acquired in good faith before the agreement came into force in that country. In addition, the member states are not required to apply the provision in question if the use or registration is not likely to mislead the public about the existence of a connection between the user and the organization. The above exception regulation partly corresponds to § 8 Abs. 4 Satz 4 MarkenG, according to which the protective barrier of § 8 Abs. 2 Nr. 8 MarkenG "does not apply if the registered trademark is not suitable to give the public the incorrect impression of a connection with the international intergovernmental organization ". The prohibition norm of § 8 Abs. 2 Nr. 8 MarkenG also includes imitations of names of international intergovernmental organizations, which § 8 Abs. 4 Satz 1 MarkenG expressly refers to. In terms of Art. 6 ter Para. 1 lit. a PVÜ, however, it must be a heraldic imitation.

Illegal trademarks, Section 8 Paragraph 2 No. 9 MarkenG

According to this regulation, brands are excluded from registration, "whose use can evidently be prohibited in the public interest according to other regulations ". There are numerous standards that do not belong to the Trademark Act that prohibit the use of trademarks for certain product areas. These are primarily public law provisions , such as food law . Section 8 (2) no. 9 MarkenG is based on Article 3 (2) lit. a Trademark Directive. This authorizes the member states of the EU to refuse the registrability of a trademark (also) under the conditions that have found their way into Section 8 (2) No. 9 of the Trademark Act in the corresponding implementation of the aforementioned provision of the Trademark Directive. The meaning and purpose of Section 8 (2) No. 9 MarkenG is to make the prohibition of use ("... can be forbidden ...") of corresponding labels as a brand for certain product groups a prohibition of registration made possible by non-branding standards and thus to strengthen it in order to effectively avoid the risk of errors in business dealings. The absolute obstacle to protection (prohibition of registration) of § 8 Abs. 2 Nr. 9 MarkenG is justified by an abstract prohibition of misleading. It does not matter here whether the public is actually being misled in each individual case. (In the latter case, however, there would be - in addition - the absolute obstacle to protection (prohibition of registration) of a deceptive trademark within the meaning of Section 8 (2) No. 4 MarkenG. See the above statements.) It should be noted that Section 8 (2) No. . 9 MarkenG a Ersichtlichkeit presupposes the (except to mark possible legal requirements) use prohibition. If a ban on use is not evident, it is entirely possible to register the trademark in question.

Trademarks applied for in bad faith, Section 8 (2) No. 10 MarkenG

According to this standard, trademarks are "excluded from registration that have been applied for in bad faith". A bad faith trademark application is the application of a sign for registration as a trademark in the trademark register of the DPMA by an applicant in bad faith. A basic prerequisite for the bad faith of a trademark applicant is that the (younger) trademark applied for by him for certain goods and / or services is identical or can be confused with a sign that does not enjoy formal trademark protection and that someone else uses for the same goods or services, and the trademark applicant this knows. The concept of bad faith in the trademark sense is based on the general legal principle that the exercise of the law is not permitted if it constitutes an abuse of the law, Section 242 of the German Civil Code (BGB). This principle also applies to trademark law. On this basis, which follows from Article 3 (2) (d) of the First Council Directive No. 89/104, the applicant is acting in bad faith if the application has been made in an immoral or illegal manner.

The case law of the BPatG and BGH has worked out two groups of cases: According to this, it is immoral if the label used by the previous user represents an asset that is worthy of protection, the trademark owner knows this and nevertheless registers a designation as a trademark in order to disrupt or adversely affect the previous user's ownership to prevent the use of the name. However, the trademark must be identical or confusingly similar to the designation used by the previous user and must be registered for the same or similar goods or services. In principle, there is no need to make high demands on the trademark owner's knowledge of his interference with the acquis that is worthy of protection, which should facilitate the evidence in this regard in many cases. In addition, a classification of the interference as immoral presupposes that it was carried out without sufficient objective reason. A trademark application that is made by the applicant with the aim of blocking the use of such symbols by third parties on the market in order to assert oneself in the competitive battle is to be regarded as a legal abuse . In this case, it does not depend on any acquisitions of the previous user that are worthy of protection. Rather, bad faith is to be affirmed if the registration of the trademark and the trademark rights acquired as a result prevent a company from competing on the market . Finally, Section 8 (2) No. 10 MarkenG requires that the applicant acted in bad faith when registering . The relevant point in time for the test for bad faith is therefore the time of registration. In not a few cases, however, it will be possible to conclude from subsequent bad faith behavior on the part of the applicant that he was already acting in bad faith at the time the trademark was applied for.

Check for absolute obstacles to refusal

The German Patent and Trademark Office (DPMA) is responsible for checking for absolute grounds for refusal in accordance with Sections 3 (2) and 8 (1) and (2) of the Trademark Act. This results from § 41 MarkenG in connection with § 32 , § 36 and § 37 MarkenG. According to § 41 sentence 1 MarkenG, an entry in the trademark register can only be made if the registered trademark meets the registration requirements and is not rejected in accordance with § 37 MarkenG. The trademark application must first be submitted to the DPMA in accordance with Section 32 (1) of the Trademark Act, which can be done either directly (Section 32 (1) sentence 1) or indirectly via a patent information center (Section 32 (1) sentence 2). In a first step, the DPMA examines the registration requirements in accordance with Section 36 (1) of the Trademark Act, which can be seen in detail in Section 36 (1) No. 1 to 4 of the Trademark Act. This is a formal check. In a second step, the DPMA then examines the trademark application (among other things) for the absolute obstacles to protection according to Sections 3 and 8 MarkenG in accordance with Section 37 of the Trademark Act. Section 37 (1) of the Trademark Act stipulates that the trademark application will be rejected if absolute grounds for refusal effectively prevent registration.

See also

Individual evidence

  1. ↑ Trademark Act of May 5, 1936 (RGBl. II, p. 134) in the version of January 2, 1968 (BGBl. I, p. 29), replaced on January 1, 1995 by the Trademark Act
  2. ↑ Law on the Reform of Trademark Law of October 25, 1994, Federal Law Gazette I, p. 3082
  3. ↑ First Council Directive on the approximation of the laws of the Member States relating to trademarks of December 21, 1988, Directive 89/104 / EEC; OJ EG No. L 40 of February 11, 1989, p. 1
  4. ↑ Karl-Heinz Fezer , Markenrecht, 4th edition, Munich 2009, Rn 4 to § 3 MarkenG
  5. ↑ a b Fezer, (individual comments 4), marginal number 11 on § 8 MarkenG
  6. ^ BGH in: Journal of Commercial Legal Protection and Copyright (GRUR) 1995, p. 408
  7. ↑ a b Fezer (individual references 4), marginal number 206 to § 3 MarkenG
  8. ↑ BGH, in: GRUR 1959, p. 599 f
  9. ↑ So already Adolf Baumbach, Wolfgang Hefermehl, trademark law, 12th edition, Munich 1985, p. 360, marginal note 108 on § 4 para. 3 WZG
  10. ↑ Fezer, (individual ref. 4), Rn 424 on § 8 MarkenG
  11. ↑ BGH, in: GRUR 1986, p. 894 f
  12. ↑ BGH, in: GRUR 1990, p. 360 f
  13. ↑ so z. B. Decision of the DPA, in: Journal "Blatt für Patent-, Muster- undzeichenwesen" (BlPMZ) 1953, p. 350
  14. ↑ Regulation (EC) No. 40/94
  15. ↑ Fezer (individual comments 4), Rn 345 on § 8 MarkenG
  16. ↑ Federal Patent Court (BPatG), in: GRUR 1996, p. 408 f
  17. ↑ Fezer, (individual references 4), marginal no. 353 to § 8 MarkenG
  18. ↑ v. Specht, in: GRUR 1929, p. 880
  19. ↑ Cf. Art. 6 ter para. 1 lit. a PVÜ.
  20. ↑ Fezer, (individual comments 4), marginal number 400 on § 8 MarkenG
  21. ↑ Fezer, (individual references 4), marginal number 402 on § 8 MarkenG
  22. ↑ Adolf Baumbach , Wolfgang Hefermehl , competition law, 17th edition, Munich 1993, inlet UWG, Rn 423 ff
  23. ↑ a b c Dietrich Scheffler, (Possible) trademark law conflicts in lease contracts , especially in the hotel or catering sector , in: Journal "Mitteilungen der deutschen Patentanwälte " (Mitt.) 2003, p. 378 ff (382)
  24. ↑ BGH, in: GRUR 2000, p. 1032 ff; BPatG, in: GRUR 2000, p. 809 ff; BPatG, in: GRUR 2000, p. 812 ff; BPatG, in: GRUR 2001, p. 744 ff; BGH, in: GRUR 2009, p. 780; BGH, in: GRUR 2010, p. 1034
  25. ↑ BPatG, in: GRUR 2002, p. 745
  26. ↑ a b BPatG, in: GRUR 2000, p. 809
  27. ↑ Fezer, (individual references 4), marginal number 29 on § 50 MarkenG
  28. ↑ a b BPatG, in: GRUR 2000, p. 811
  29. ↑ BGH, in: GRUR 2001, p. 746

literature

  • Karl-Heinz Fezer, Trademark Law, 4th edition, Munich 2009
  • Adolf Baumbach, Wolfgang Hefermehl, Trademark Law, 12th edition, Munich 1985
  • Dietrich Scheffler, (Possible) trademark law conflicts in lease agreements, especially in the hotel or catering sector, in: Journal "Mitteilungen der Deutschen Patentanwälte" (Mitt.), Cologne, Berlin, Bonn, Munich 2002, p. 378 ff
  • Uwe Dreiss, Rainer Klaka, The new trademark law: creation and expiry, proceedings, collision and judicial enforcement, Bonn 1995

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