The registration of the trade mark NerdCon was refused by the BPatG because it was considered descriptive for events with nerds. Did consumers see the word elements NERD and CON in the NerdCon trade mark, and that already in 2015?
This trade mark dispute concerning a composite word mark before the German Federal Patent Court (BPatG, 29 W (pat) 530/16) concerned the trade mark application for the term NERDCON. The trade mark was applied for in 2015 for clothing and headgear (Nice Class 25), for organisation of exhibitions and trade fairs for economic and advertising purposes (Nice Class 35) and for services relating to leisure activities (Nice Class 41).
The desired trade mark application was refused by the German Trade Mark Office (DPMA) because the word NERDCON contained a descriptive reference to events with nerds.
The DPMA stated in its decision that it was not necessary to define exactly what was meant by an event for nerds; a certain vagueness of the term did not lead to protectability.
The trade mark applicant filed an appeal against this decision with the BPatG. The trade mark applicant argued that the trade mark NerdCon contained several possible interpretations due to the combination of the two word elements without any visual interruption, and that the term was therefore imaginative and had sufficient distinctive character because it was ambiguous.
Legendary in this context is the well-known slogan “Vorsprung durch Technik” by car manufacturer Audi, which is protectable as an EU trade mark due to its ambiguity – we reported. The German word “Vorsprung” as several meanings, as advantage, lead or leading egdge.
Composite trade mark NerdCon: new as a whole?
However, in case NERDCON the Federal Patent Court rejected the trade mark applicant’s appeal. The word components in the term NerdCon were used according to their meaning, the court ruled, and also did not form a new term as a whole. Consumers would dissect the sign into NERD and CON. Even taken together, they would not form a new term that goes beyond the mere combination.
NERD and CON common use in GER – also in 2015
At the time of the application in 2015, NERD and CON were already in common use in Germany as terms for the meaning “event for nerds”, the court explained. A nerd was a computer freak or – in the words of the Duden of 2004 – the term for a “very intelligent but socially isolated computer fan”, and con was understood as a convention, i.e. a gathering of people with the same interests.
The BPatG added that the joining of two word elements without any visual interruption did not lead to the conception of several meanings. It was rather a matter of an orthographic deviation customary in advertising, to which the general public is accustomed.
Furthermore, the court added that signs which do not directly relate to the goods and services claimed, but which create a close descriptive relationship to them, are also devoid of distinctive character (cf. BGH GRUR 2014, 1204 para. 16 – DüsseldorfCongress; loc. cit. para. 16 – Gute Laune Drops; loc. cit. para. 23 – TOOOR!).
The BPatG ruled that the trade mark registration had therefore been refused quite correctly, and that the term NERDCON lacked distinctive character under § 8(2)(1) MarkenG.
Counter-example: ToolTime TM for digital office services
However, the BPatG ruled differently on the term TOOLTIME as a trade mark for digital office services – we reported. TOOLTIME lacked an unambiguous conceptual content, sufficiently far from an unambiguous factual indication, the Federal Patent Court had ruled. Although the words “tool” and “time” are quite unambiguous, it remains completely unclear what is meant by “tool time”. In the ToolTime case, the BPatG had ruled that a certain allusion to a certain meaning was inherent in speech marks, although this did not rule out the possibility of such marks being perceived as a designation.
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