Everyone thinks of themselves, only I THINK OF MYSELF!

This is what a trade mark applicant thought and he applied to the DPMA for a word/figurative mark consisting of a standard font and not particularly designed word sequence "ICH DENK AN MICH!" inter alia for jewellery, clothing and retail services. The sole design feature was the vertical arrangement of the individual words.

The DPMA refused the trade mark application on grounds of lack of distinctive character. The applicant filed an appeal against this decision at the BPatG.

The Court's decision

The Court dismissed the appeal with Decision of 29.04.2014 (Az. 27 W (pat) 572/13 and confirmed the lack of distinctive character found by the DPMA. Distinctive character is the capacity of a sign to distinguish the goods or services of one undertaking from those of other undertakings by conveying the impression of a particular origin. These requirements were not met in the sign in dispute, as it was limited to a general advertising statement. Not least due to its similarity to generally known formulations such as "remember yourself for once", the word meaning of the clear and simple expression was immediately comprehensible.

With regard to the goods and services claimed, the Court took the view that the expression "ICH DENK AN ICH" should be understood to mean that the possession and use of the products or the use of the services satisfy personal needs. The first-person form used and the exclamation mark placed after it were merely customary advertising design devices to address the consumer personally, and were therefore not capable of conveying a sufficient connection to origin.

Conclusion

The trade mark applicant apparently expected from the outset that the word sequence "ICH DENK AN MICH" would not be capable of protection. In this situation, it is fundamentally correct to apply for a word/figurative mark in order to avoid these difficulties and to have at least "something" in the end – a bird in the hand is worth two in the bush. However, as in the decision "Sachsen – Ein Land in Bewegung" (see our article), the problem ultimately lay in the completely trivial design, which meant that the application was still limited to the unprotectable word signs. If one therefore resorts to this method, it is not without a minimum degree of design in order to generate distinctive and protectable elements alongside the word sign.