This is indeed myschwiegermutterkäse…?

In the present case, the Federal Patent Court (BPatG) had to decide whether the application for the mark "myschwiegermutterkäse" for goods and services in classes 29, 30 and 41 was correctly rejected on the grounds of lack of distinctiveness and retention requirement.

The application for the mark "myschwiegermutterkäse" for goods and services in classes 29 (inter alia eggs, milk, cheese and other dairy products), 30 (inter alia coffee, tea, sugar) and 41 (inter alia organisation of leisure events) was rejected by the competent trade mark office. In its reasoning, the trade mark office stated that the registration of the applied-for designation in relation to the claimed goods was barred both by
the obstacle of lack of distinctiveness and by a retention requirement.

The applied-for mark consisted visibly of the two
word elements "my" (my) and "schwiegermutterkäse", which is familiar to the German trade as a technical term in the culinary and food sector, so that the applied-for mark represents an advertising descriptive generic designation and is therefore not capable of registration.

Against this, the trade mark applicant files an appeal.

Court's decision

By Beschluss vom 07.08.2014 – Az. 25 W (pat) 584/12 – the Federal Patent Court (BPatG) decided that the registration of the mark in classes 30 and 41 was wrongfully refused in part by the trade mark office.

With regard to the registration of the mark for class 29 and certain goods and services in classes 30 and 41, the BPatG upheld the rejection, as registration obstacles existed in respect of the applied-for goods. In particular, these goods lacked the necessary distinctiveness due to the descriptive character of the mark, as the trade mark office had already correctly established.

The applied-for word combination "myschwiegermutterkäse" is furthermore apt to mislead the public in connection with the claimed goods milk and other milk products (excluding cheese). Cheese is made from milk and is therefore a milk product. The public could therefore be given the impression that the goods are either cheese or that cheese is at least an essential component of the product.

As for the remaining applied-for goods and services, however, the sign cannot be said to lack all distinctiveness, so the rejection had to be set aside.

Conclusion

When assessing registration obstacles, the goods and services to be registered must always be assessed individually. As in the present case, appropriate registration reservations often apply only to individual goods and services. A registration of the mark is then not opposed to this extent.