Horse salve for human children?

The Federal Patent Court (Bundespatentgericht) had to address the registrability of the mark "Pferdesalbe", which the applicant wished to register in class 3 inter alia for body care and cosmetic preparations. Prior to this, the German Patent and Trade Mark Office (DPMA) had refused registration on the ground that the mark was purely descriptive.

The present case is based on the application for the word mark "Pferdesalbe" filed with the German Patent and Trade Mark Office (DPMA) inter alia for the following goods and services:

Class 3:

Soaps; body care and cosmetic preparations; moistened wipes impregnated with body care and cosmetic preparations; body peeling for body care and cosmetic purposes including cosmetic salts and/or essential oils and/or essential essences; facial peeling for body care and cosmetic purposes including cosmetic salts and/or essential oils and/or essential essences; gel masks and cooling pads for body care and cosmetic purposes; massage gels, other than for medical purposes; herbal compresses for body care and cosmetic purposes.

The Trade Mark Office refused registration of the mark for part of the applied-for goods and services on the ground that the applied-for designation lacked the requisite distinctive character. Furthermore, "Pferdesalbe" constituted a generic term which had to be kept free.

The applicant argued in response that the relevant public would understand the term "Pferdesalbe" at most as a reference to a salve for horses, but not as a term for a product intended for use on humans.

Decision of the Court

By Judgment dated 03.07.2014 – Az. 24 W (pat) 10/13 – the Federal Patent Court (BPatG) decided that the word mark "Pferdesalbe" was not registrable for the majority of the goods applied for here. This is because the term "Pferdesalbe" would be understood by the relevant public solely as a product description and not as an indication of commercial origin.

Furthermore, the Federal Patent Court (BPatG) established that even in the case of goods intended for use on humans, the relevant public does not recognize in the indication "Pferdesalbe" a – potentially misleading – instruction for use, but rather understands it as a reference to specific product characteristics.

Conclusion

Generic terms for a particular group of goods or services and purely descriptive marks constitute grounds for refusal of registration which stand in the way of registration with the DPMA. This should be examined accordingly prior to filing applications for marks.