Is the mark "HOT" distinctive?

In proceedings for revocation of protection of an internationally registered mark (IR mark), the Federal Court of Justice (BGH) had to decide whether the registered mark "HOT" possesses distinctiveness or whether protection of the mark should be revoked on the grounds that it lacked the capacity to distinguish goods or services according to their origin.

The internationally registered word/figurative mark "HOT" was initially registered, inter alia, for the goods cosmetics, hygiene products, printed matter and clothing items in classes 3, 5, 16 and 25. This mark was now challenged before the Federal Court of Justice (BGH) in its final instance against the mark owner on the grounds that the IR mark "HOT" possessed no distinctiveness whatsoever.

The Federal Patent Court confirmed this legal view in the second instance and revoked the protection of the mark.

Decision of the Court

By means ofDecision of 19.02.2014 – Az. I ZB 3/13 – the Federal Court of Justice (BGH) confirmed the legal view of the lower court, holding that an internationally registered mark should be revoked if it lacks any distinctiveness in relation to the goods or services for which it is registered.

This was the case because the word "HOT" belongs to the English basic vocabulary. In addition to the meaning "hot" for temperature, the relevant public also translates "hot" as spicy (food) or sexy or trendy. In the case of such descriptive indications, there is no factual indication that the relevant public would understand them as a means of distinguishing the mark.

Marks which make statements relating to circumstances not directly concerning the goods or the service themselves likewise lack distinctiveness where the statement creates a close descriptive link to the goods or services for which the application is made and where, as a result, it is justified to assume that the relevant public will immediately and without doubt perceive the descriptive concept as such and will not see the designation as a means of distinguishing the origin of the goods or services applied for.

Conclusion

In the case of polysemous words, all meanings of which are capable of describing the goods and services for which the word is registered as a mark, the distinctiveness of the mark cannot be assumed. An already registered mark can then be deleted on request.