The First Civil Senate of the Federal Court of Justice, which is responsible among other things for trade mark law, yesterday ruled on the legal validity of the registration of the word and figurative mark "test" of Stiftung Warentest.
The word-picture trademark "test" on a red background in white lettering had been registered by the German Patent and Trademark Office in 2004 for, among other things, test magazines and consumer information as well as publication of product tests and service investigations. Axel Springer Verlag applied for cancellation of the trademark in 2006.
The German Patent and Trade Mark Office granted the cancellation request and ordered the cancellation of the trade mark. On appeal by the trade mark proprietor, the Federal Patent Court revoked the cancellation order.
Like the Federal Patent Court before it, the Federal Court of Justice assumed that the word and figurative mark "test" for test magazines and consumer information as well as publication of product tests and service investigations is a descriptive indication because it designates the content of the printed matter. The ground for refusal of lack of distinctive character can be overcome by using the trade mark. The Federal Patent Court assumed this on the basis of the market position of the magazine published by Stiftung Warentest with the designation "test" and an opinion research report.
In contrast to the Federal Patent Court, the Federal Court of Justice assumed that the result of the opinion research report obtained at the end of 2009 was not sufficient for the assumption that the word and figurative sign had become established as a trade mark among the general public. According to this expert opinion, only 43% of the respondents saw the sign as an indication of a certain company after correcting for misclassifications, which is not sufficient to establish acceptance by the public as a rule. Moreover, since the trade mark proprietor has not used the trade mark in the registered form since May 2008, it could not be ruled out that this share had further decreased by June 2012, the date relevant for the decision of the Federal Patent Court on the cancellation. The other indications (market share, circulation, advertising expenditure and duration of distribution of the magazine) were not sufficient for the assumption of acceptance by the public, because the result of the opinion research report contradicted this. Opinion research reports are normally the most reliable evidence for assessing the question of the acceptance of a trade mark. The Federal Court of Justice referred the case back to the Federal Patent Court, which still has to make further findings. In particular, it still has to be clarified whether the trade mark "test" - as the Patent and Trade Mark Office assumed - was wrongly registered in 2004. This is because a trade mark registered on grounds of distinctiveness can only be cancelled if it has been wrongly registered - due to a lack of distinctiveness - and has not acquired distinctiveness by the time the decision on the cancellation request is made.
Order of the Federal Supreme Court of 17 October 2013 - I ZB 65/12
Lower court:
BPatG, decision of 27 June 2012 - 29 W (pat) 22/11, GRUR 2013, 388
Source: Press release of the BGH
Goldberg Attorneys at Law 2013
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law
E-mail: info@goldberg.de
