We can do anything – except register a trade mark

The Federal Patent Court (BPatG) decided by judgment of 25.03.2014 (29 W (pat) 34/12) that the word/figurative mark "Sachsen – Ein Land in Bewegung" lacked the requisite distinctive character both as a whole and for all claimed goods and services. The corresponding refusal decision of the DPMA was thereby upheld.

The Land of Saxony applied on 30.03.2011 for registration of the adjacent word/figurative mark with the DPMA, inter alia for printed matter, journals, teaching and educational materials, advertising, market research, entertainment events and cultural activities. The DPMA refused the application by decisions of 26.10.2011 and 23.01.2012 (reminder decision) on the grounds of lack of distinctive character. The applicant brought an action before the BPatG against this refusal.

The court's decision

The court ultimately upheld the refusal and denied registration of the mark. It was not capable of protection either in relation to the word element or the figurative element, because it lacked any distinctive character. The prerequisite for the existence of distinctive character is the suitability of a sign to distinguish the goods and services of one enterprise from the goods and services of other enterprises.

According to the court's reasoning, the applied word/figurative sign was to be understood merely as an advertising customary, commendatory factual statement, and not as an indication of commercial origin. The word elements had a descriptive conceptual content standing in the foreground for the claimed goods and services. "Sachsen" represented merely a geographical indication, and "Ein Land in Bewegung" was solely suitable to express that here (in Saxony) the opposite of stagnation, inertia and regression prevails. In this sense, the expression is customary and is also frequently used as a slogan and subject heading (e.g. "Brandenburg – Ein Land in Bewegung", "Zürich – Eine Stadt in Bewegung" etc.).

In the court's view, the graphical design of the sign also does not lead to a different assessment. Although a figurative mark with descriptive word elements may be attributed distinctive character if the graphical elements themselves have characteristic features that convey a reference to origin, the applied word/figurative mark consists exclusively of simple graphic designs and decorations frequently used in advertising, which lack the requisite originality.

Conclusion

The decision is hardly surprising if one takes into account the consistent case law on registrability of advertising slogans. Adding to this is the fact that the slogan was not even individually designed, but came off the shelf. Registration of a word mark was therefore excluded from the outset. Apparently this was recognised, and an attempt was made with a figurative mark, which is generally a safe bet. However, the decision shows that not every trivial design is capable of protection. A certain degree of individuality and creativity is therefore also required here.