If words from normal usage are placed under trademark protection, the courts distinguish exactly. The Federal Patent Court ruled: no trademark protection for “trial sample”. However, registration was granted for pharmaceuticals, pharmaceutical products and preparations for health care.
In July 2013, a feed manufacturer applied for registration of “Trial sample (in German: “Schnupperprobe”)” as a trademark for, inter alia, goods of the following categories:
- Class 3 (Cosmetic preparations for animals; animal perfumery; animal toilet preparations and cosmetics; essential oils, soaps, animal dentifrices and toilet preparations; animal oral hygiene preparations, not for medical purposes; animal shampoos)
- Class 5 (dietetic foodstuffs for medical purposes, food supplements for medical purposes, dietetic substances for medical purposes; preceding goods for animal use) and Class 31 (feedingstuffs for animals and domestic animals, in particular for dogs, cats and horses)
The German Patent and Trade Mark Office (DPMA) already refused to register the trade mark for these goods on the ground of lack of distinctive character pursuant to §8.2 German Trademark Law (MarkenG). It argued that the sign consisted of the linguistically correct combination of the word formation element “Schnupper- (in English: Trial)” derived from the verb “Schnuppern (in English: to try)” and the word “Probe (in English: sample)”. In the combination, the overall word “Trial sample (“Schnupperprobe”)” has, inter alia, the meaning “a sample for testing, trying out or getting to know” or the meaning “olfactory sample, sample for smelling by test”. Both are found to be purely descriptive by the DPMA.
However, registration was granted for medicinal products, pharmaceutical products and preparations for health care as well as for plasters and dressing materials.
Federal Patent Court decides: no trademark protection for “trial sample”
This decision was confirmed four years later by the Federal Patent Court (BPAtG, 30 W (pat) 27/15). Especially since the applicant also used the sign descriptively according to the findings of the court by publishing on her website the offer “trial sample – free of charge for your dog” (…) If you have not yet tried PLATINUM complete food for your dog, we will gladly send you a free trial sample with our three adult varieties (…))”. Obviously, the applicant wanted the exclusive rights to offer free samples and product samples as “trial samples”.
The decision of the Federal Patent Court is not surprising. The registration of trademarks with descriptive content regularly fails. The reason for this is that the trade should not be prevented from describing a product or service as what it is: in this case a trial sample.
Free distribution of medicinal products as “trial samples” is prohibited
Free distribution of medicinal products “trial samples” is prohibited outside the professional circles. The fact that trademark registration was granted for pharmaceuticals, pharmaceutical products and preparations for health care as well as for plasters and bandaging material should not be of much use to the applicant. Because the free distribution of samples is forbidden outside the professional circles according to § 11 Act on the Advertising of Medical Products (Heilmittelwerbegesetz (HWG)) anyway, and a medicine will probably not want to bring it under this name rather on the market.
The procedure might have cost the applicant not only a lot of time, but also a lot of money. Also all money in the application of the obviously already used mark was invested free of charge, since now also each competitor may offer its product samples as trial samples.
These are more recent judgments concerning trade marks and a descriptive character:
- SHERPA versus SHERPA: Word mark identical or similar?
- ALPINEWELTEN no Union Trade Mark: illustration not original enough
- “Vienna House” lacks distinctiveness for hotel services
- Is iGrill an interactive grill? Weber Grill cannot protect the word mark
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