Letter "M" for sports cars eligible for registration as a mark

The Federal Patent Court has recently decided that the letter "M" for goods of class 12, namely sports cars, is distinctive and not required to be kept free. The corresponding refusal decision of the German Patent and Trade Mark Office was therefore set aside.

In 2010, BMW AG applied for the letter "M", which was already well known in connection with BMW vehicles, as aword mark for sports cars (Nice class 12). The DPMA rejected the mark application on the grounds that the sign was not capable of protection for automobiles because it would be understood by the relevant public as a descriptive abbreviation for a type or model designation ("Modell", "mega", "Medium"). The sign therefore lacked the required (concrete) distinctiveness and, moreover, it was required to be kept free because other automobile manufacturers were dependent on it in order to advertise their products correctly.

The Court's Decision

The Federal Patent Court (BPatG) granted the appeal against this by decision of 14.11.2012 (28 W (pat) 518/11) and set aside the DPMA's refusal decision. In the court's view, there were no obstacles to the registration of the letter "M" for sports cars. The sign would neither be understood as a reference to the EU vehicle category "M" (Directive 2007/46/EG), nor would the terms "Modell", "mega" and "Medium" allegedly abbreviated by "M" in the DPMA's view necessarily relate to sports cars. A descriptive meaning was thus excluded. Furthermore, it was not apparent why other automobile manufacturers would need the letter "M" in order to correctly designate their vehicles. No such industry standard was apparent, which is why there was no requirement to keep the sign free. It was therefore no longer necessary to consider a possible market penetration due to the notoriety of the sign "M" for sports cars of the brand "BMW" (or M-GmbH). This would in any case have been the lifeline.

Conclusion

The DPMA's initial decision appears to be based on the desire to keep the register free of individual letters. In any case, the attempts to draw an inevitable conclusion from the "M" to "mega" seem rather contrived. In this case it did not work out, so the "M" is now lost for other automobile manufacturers. With "S" as in "Sport", the decision would probably have turned out differently.