Trade mark "VITA" for insurance descriptive?

In the context of an appeal procedure, the Federal Patent Court had to decide whether the Federal Patent Office had rightly refused the registration of the sign "VITA" for insurance services.

An insurance company attempted toregister the trade mark"VITA" with the Federal Patent Office for the following services:

Class 36:
Insurance business, in particular life and health insurance, long-term care insurance, accident insurance, pension and disability insurance, pension funds.

The Trade Mark Office refused registration of the trade mark on the grounds that the sign was suitable for describing the claimed services. In its reasoning, the Trade Mark Office stated that the Italian word "vita" translates to "life" and, in any case, in the Italian-speaking area serves readily as a technical term designation for the life sector, and thus also for life insurance.

Against this decision, the applicant lodged an appeal with the BPatG.

Court's decision

The 25th Senate of the Federal Patent Court, responsible for trade mark appeals, decided byorder of 18.07.2014 – Az. 25 W (pat) 7/14– that the registration of the trade mark "VITA" was rightly refused by the DPMA and thus dismissed the applicant's appeal.

As put forward by the German Patent and Trade Mark Office, the sign "VITA" was suitable as an indication of life insurance to designate the object of insurance, the type of insurance service or the insurance class.

This does not change matters in the present case, as "vita" is a word originating from the Italian language. For the registrability of foreign-language terms, what is decisive is the understanding of the relevant domestic circles of trade, which, in the court's assessment, are in a position to recognise the meaning of the foreign-language trade mark "VITA".

From this it follows in the present case that there is a need for freedom, which stands in the way of trade mark registration.

Conclusion

The need for freedom with respect to descriptive indications stems from the general interest that every competitor must be permitted to specify his services by means of appropriately descriptive terms. This is the case with the mark "VITA", so that the decision of the BPatG is comprehensible.