The First Civil Senate of the Federal Court of Justice (BGH), responsible inter alia for trademark law, ruled on October 23, 2008, on the legal validity of the "POST" trademark.
The trademark “POST” was registered by the German Patent and Trademark Office in December 2003 for numerous services, including the collection, forwarding, and delivery of shipments, and the transport and delivery of goods, letters, and parcels. Several competitors and associations had filed applications for cancellation of the registration, arguing that the "POST" trademark should not have been registered.
The German Patent and Trademark Office (DPMA) granted the cancellation requests and ordered the deletion of the trademark. The Federal Patent Court rejected the appeal filed by Deutsche Post AG. Yesterday, the Federal Court of Justice granted Deutsche Post AG's appeal on points of law against this decision.
The BGH overturned the decision of the Federal Patent Court and remanded the case to that court for a new hearing and decision.
Like the Federal Patent Court, the Federal Court of Justice assumed that the designation "POST" is a descriptive indication for the services for which trademark protection is claimed, as the term refers to the subject matter of the service. The inherent obstacle to protection can, however, be overcome under the law if the designation "POST" has acquired distinctiveness in trade as an indication of commercial origin and thus as a trademark. The German Patent and Trademark Office initially proceeded on this assumption and therefore registered the "POST" trademark in 2003. The now requested cancellation of the trademark requires the finding that distinctiveness in trade, contrary to the original assumption, was neither present at the time of the trademark's registration nor occurred during the cancellation proceedings.
The Federal Court of Justice clarified that mere doubts about the distinctiveness acquired through use (Verkehrsdurchsetzung) could not justify cancellation. In the cancellation proceedings concerning the distinctiveness of the "POST" trademark, Deutsche Post AG had submitted market surveys from opinion research institutes. The reported share of approximately 85% of respondents who perceived the term "POST" as an indication of commercial origin does not, according to the BGH, lead to the conclusion that the trademark had not acquired distinctiveness as an indication of origin. While the Federal Patent Court had expressed methodological concerns regarding the results of the opinion research reports and had therefore assumed a significantly lower degree of distinctiveness, these concerns did not justify canceling the trademark. Rather, the Federal Patent Court should have conducted further investigations ex officio and, if necessary, obtained another expert opinion. The Federal Court of Justice therefore remanded the case to the Federal Patent Court for further factual findings. Furthermore, in its decision, the Federal Court of Justice considered that even if the "POST" trademark were to remain valid, Deutsche Post AG cannot prohibit its competitors from using the descriptive term "Post" itself as part of their company names. For example, in June 2008, the Federal Court of Justice dismissed two lawsuits 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 loses dispute over rights to the "POST" trademark."
Deutsche Post AG must therefore continue to be concerned about the validity of its "Post" trademark. However, the BGH's decision represents an initial "stage victory" for Deutsche Post AG. Ultimately, it will be decisive whether further factual findings show that the designation "POST" has acquired distinctiveness in trade as an indication of commercial origin and thus as a trademark. Should Deutsche Post AG succeed in proving this to the court's satisfaction, the cancellation of the "Post" trademark will be definitively overturned.
We will keep you informed about the progress of this trademark dispute.
Decision of the BGH of October 23, 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
