A homogeneous group of goods and/or services can be assessed in summary form in the statement of reasons for decisions on absolute grounds for refusal. However, they may not be treated equally or not assessed at all without further justification, the German Federal Patent Court ruled.
Trade mark application for the word EISBLOCK
The case centres on the trade mark application for the word EISBLOCK (in engl: ICE BLOCK). The word mark EISBLOCK had been applied for at the German Patent and Trade Mark Office (DPMA) for a variety of goods and services, inter alia in Nice classes 25 (headgear, clothing) and 41 (events), but also in Nice classes 33 (alcoholic beverages) and 43 (food and beverages).
The DPMA refused that trade mark application on the ground of lack of distinctiveness. The goods claimed in Class 25 were merchandising products to which the trade mark applied for was only applied as an imprint. In addition, the applicant claims that the artistic creation of sculptures from blocks of ice and the preparation of food and drink using blocks of ice are well known.
The trade mark applicant lodged an appeal against that decision and requested that it be set aside. It argued that words contained in the Duden dictionary were distinctive as long as, like the mark applied for, they did not make a direct connection with the goods and services claimed.
BPatG: insufficient differentiation of goods and services
However, the Bundespatentgericht (BPatG), in its judgment in that case (26 W (pat) 568/19, EISBLOCK), did not even consider the distinctive character of the word sign EISBLOCK in relation to the goods and services claimed. The BPatG explained that the DPMA had in principle only insufficiently differentiated between the individual goods and services in its reasoning for refusing registration of the mark. Thus, the trade mark office had failed to give reasons for the refusal decision in the present case (see § 61 (1), German Trade Mark Law).
For in examining the absolute grounds for refusal of protection under § 8 (2) MarkenG, all goods and/or services claimed must in principle be assessed, the court emphasized and in this context also referred to the judgments BGH 2009 – DeutschlandCard and ECJ 2007 – MT&C/BMB. According to general case law, a global justification is sufficient if the same considerations concern a category or group of the goods and/or services applied for, i.e. if a homogeneous group can be identified.
European Court: Homogeneous group of goods and services
However, it is precisely such a grouping as a homogeneous group that is repeatedly the subject of trademark law proceedings, especially recently before the European Court. The fact that “toiletries” also form a homogeneous group with “personal care products” was decided by the Court of Justice of the European Union (CJEU) at the beginning of this year in the case of a 3D trademark flower. Also in January 2020, the CJEU ruled that the claimed services in Nice class 42 for complex software were different, but nevertheless largely inseparable; IT creation goes hand in hand with consulting, the court ruled. In this context, the CJEU’s judgment on the distinctiveness of an advertising message of May 2020 is also noteworthy. Since an advertising message conveys a very broadly defined promotional message in relation to a wide range of goods and services, all these goods and services can be combined into a single sufficiently homogeneous group, the CJEU stated.
Breach of the duty to state reasons
The BPatG stressed that the same reasoning relevant for different goods and/or services does not have to be repeated for each individual item of the list of goods/services, but that groups of goods and/or services can be assessed in summary. In the EISBLOCK case, however, the DPMA had only stated in general terms that terms listed in dictionaries and generally understandable indications such as the application sign lacked the necessary distinctiveness. In the opinion of the BPatG, this was insufficient.
The court explained that the duty to state reasons is infringed if different goods and/or services are treated equally without further justification or are not assessed at all.
In the present case, the DPMA had not even defined the literal meaning of the sign applied for, the court criticised. The Court also found that there was an almost complete lack of a statement of reasons regarding the meaning of the sign in relation to the numerous goods and services in the list of goods and services for which registration is sought. Furthermore, in the service claimed in Class 43, the DPMA simply claimed that the preparation of food and drink was carried out with the aid of blocks of ice. However, this was neither explained nor proved.
Therefore, the decision of the DPMA had to be reversed under § 70 (3) German Trade Mark Law, the BPatG ruled, and the case was referred back to the DPMA for re-examination of the trade mark application.
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