On 23 October 2008, the First Civil Senate of the Federal Court of Justice (BGH), which is responsible, among other things, for trade mark law, ruled on the legal validity of the trade mark "POST".
The trade mark "POST" had been registered by the German Patent and Trade Mark Office in December 2003 for numerous services including the collection, forwarding and delivery of mail and the transport and delivery of goods, letters and parcels. Several competitors and associations had filed applications for cancellation of the registration because, in their view, the trade mark "POST" should not have been registered.
The German Patent and Trade Mark Office (DPMA) granted the cancellation requests and ordered the cancellation of the trade mark. The Federal Patent Court dismissed Deutsche Post AG's appeal. Yesterday, the Federal Court of Justice allowed Deutsche Post AG's appeal against this decision.
The BGH reversed the decision of the Federal Patent Court and referred the case back to that court for a new hearing and decision.
Like the Federal Patent Court, the Federal Court of Justice assumed that the term "POST" is a descriptive indication of the services for which trade mark protection is claimed. This is because the term designates the object to which the service relates. According to the law, the obstacle to protection which thus exists per se can be overcome by the fact that the designation "POST" has become established in the trade as an indication of the business origin and thus as a trade mark. The German Patent and Trade Mark Office initially assumed this and registered the trade mark "POST" for this reason in 2003. The cancellation of the trade mark now requested requires a finding that, contrary to the original assumption, the trade acceptance neither existed at the time of registration of the trade mark nor occurred in the course of the cancellation proceedings.
The Federal Court of Justice (BGH) has made it clear that doubts as to whether the mark has become established in the market alone cannot justify cancellation. In the cancellation proceedings, Deutsche Post AG had submitted traffic surveys conducted by opinion research institutes on the acceptance of the trade mark "POST". According to the Federal Supreme Court, the share of almost 85% of respondents who perceived the term "POST" as an indication of the company's origin does not allow the conclusion that the trade mark had not established itself as an indication of origin. The Federal Patent Court had indeed expressed methodological concerns about the results of the opinion research reports and had therefore assumed a significantly lower degree of assertion. However, the reservations about the opinion research reports submitted by Deutsche Post AG did not justify cancelling the trade mark. Rather, the Federal Patent Court would have had to conduct further investigations ex officio and, if necessary, obtain a further expert opinion. The Federal Court of Justice therefore referred the case back to the Federal Patent Court for further factual findings. In its decision, the Federal Court of Justice also took into account that Deutsche Post AG cannot prohibit its competitors from using the descriptive indication "Post" itself as part of the company name, even if the trade mark "POST" continues to exist. In June 2008, for example, the Federal Court of Justice dismissed two actions brought by Deutsche Post AG against competitors calling themselves "City Post" and "Die Neue Post". We have already reported on these decisions in the article "Deutsche Post AG is defeated in dispute over rights from the "POST"trademark".
Deutsche Post AG must therefore continue to fear for the continued existence of its "Post" trademark. However, the decision of the Federal Supreme Court represents a first "stage victory" for Deutsche Post AG. Ultimately, it will be decisive whether the further factual findings show that the designation "POST" has prevailed in the trade as an indication of the operational origin and thus as a trade mark. If Deutsche Post AG succeeds in proving this to the conviction of the court, the cancellation of the "Post" trade mark will be finally revoked.
We will keep you informed about the progress of this trademark dispute.
Order of the Federal Supreme Court of 23 October 2008 - I ZB 48/07
Previous instance: Federal Patent Court - Order of 10 and 11 April 2007 - 26 W (pat) 24/06, cf. also: GRUR 2007, 714
Source: Press release of the press office of the Federal Supreme Court (BGH) No. 196/2008 of 24.10.2008
© Goldberg Attorneys at Law, Wuppertal-Solingen 2008
Attorney at Law Michael Ullrich, LL.M.(Information Law)
m.ullrich@goldberg.de
