Lack of distinctive character for 'Lichtmiete'

The principal function of a trade mark is to guarantee the origin of the goods/services indicated. Does the designation 'Lichtmiete' possess sufficient distinctive character for lighting systems? No, ruled the Federal Patent Court.

An entrepreneur filed the word mark 'Lichtmiete' for registration with the German Patent and Trade Mark Office (DPMA) for Class 11 (including lighting systems), Class 37 (including installation of lighting systems) and Class 43 (including rental of lighting sources).

By decision, the DPMA rejected the application due to lack of distinctive character. The term 'Lichtmiete' designates in an obvious manner the renting of light-producing lighting sources. The filed word mark amounts to a purely descriptive indication and is not understood as an indication of commercial origin.

The entrepreneur then filed an appeal with the Federal Patent Court (BPatG). He argued that the relevant circles of trade would not understand the term 'Lichtmiete' as merely 'renting light', since the term 'Lichtmiete' is contradictory in itself. According to the literal meaning of the words, one cannot rent light; the sign therefore prompts reflection and thus possesses a fanciful surplus. An understanding indicating origin and thus distinctive character would thus be present.

Decision of the court on Lichtmiete

The BPatG (Beschl. v. 13.02.2020, Az. 29 W (pat) 523/18) found that the filed designation 'Lichtmiete' lacks the requisite distinctive character and the application for word mark was therefore rightly rejected.

In principle, distinctive character within the meaning of trade mark law is the ability inherent in a trade mark (concrete suitability) to be perceived by the public as a distinguishing medium. This marks the goods and services in question as originating from a specific undertaking, and thus differentiates those goods or services from those of other undertakings. This is because the principal function of the trade mark is to guarantee the origin of the goods and services indicated.

The court made clear that the relevant circles of trade understood the designation 'Lichtmiete' in the concrete context of the goods/services only as a catchword-like factual indication, but not as an indication of origin from a specific undertaking. This is because the filed mark is perceived as a combination of the word elements 'Licht' and 'Miete'. Both terms are descriptive in themselves, and this descriptive character is not lost through the concrete combination of the components. Rather, the composite designation also results in a factual statement in its entirety.

The court likewise rejected the entrepreneur's objection that 'Lichtmiete' was a fanciful term with paradoxical content. This is because it is customary for concepts to be not entirely legally and scientifically correct, or even appear paradoxical on closer inspection, and nevertheless to be understood as factual indications. Furthermore, one could also not 'manage', 'design' or 'advise' on light; nevertheless, it is beyond question that 'Lichtmanagement', 'Lichtdesign' or 'Lichtberatung' are long-established factual indications.

Conclusion

The combination of the two descriptive words into the overall concept 'Lichtmiete' represents an advertising-style composite word combination which the public understands readily and without difficulty as a catchword-like indication of a rental model for light/lighting. Thus, it lacks the distinctive character necessary for trade mark protection.