Malle has been declared invalid as an EU word mark. Since 2004, the term Malle was a protected EU word mark, which was used to make license claims and warnings. Nevertheless, trademark protection for “Malle” is still valid; the judgement is not yet final and proceedings against the German word mark are also underway in GER.
Mr. Jörg Lück from Hilden (Germany) had already had “Malle” protected as a German word and picture trademark (DE 30146994) in 2001 and as a European word trademark since 2004 (EM 002631166). The designation “Malle” is protected for the following goods and services:
- Sound carriers (Nice class: 9);
- Broadcasting of television and radio broadcasts (Nice class 38);
- advertising (Nice class: 35);
- entertainment; sporting and cultural activities; party organisation, party performance; running a discotheque; production of audio files (Nice Class 41)
With the decision of 18 May 2020, EUIPO has now declared the EU word mark Malle invalid. The EUIPO found that there was an absolute ground for refusal because the word “Malle” was a word of the general standard language. Furthermore, it is decisive that the German public would clearly understand the word “Malle” as a geographical reference to the island of Mallorca.
However, that decision is not yet final. And the proceedings before the Düsseldorf Regional Court have not yet been decided either, where the German word and figurative mark is being heard. In this respect, the trademark protection for Malle is still to be observed for the time being and any warnings regarding “Malle” are still legal.
Trademark registration “Malle” for warnings
The entrepreneur from Hilden used the trademark registration of the term “Malle” for license claims and for warnings against commercial use of the term. For example, the German travel blog “Reisetiger” was warned, where the word “Malle” was used several times in an article.
A licence claim was also submitted to a caterer who organised a party under the motto “Malle for everyone”. This gastronomer refused. In his opinion, “Malle” is the common abbreviation for Mallorca.
Malle- short form for Mallorca or party island?
This is now the decisive aspect in the “Malle” case before the Düsseldorf Regional Court. Does one associate “Malle” primarily with the island of Mallorca or as a synonym for a certain way of celebrating parties? This question determines whether “Malle” is descriptive as a trademark.
The EUIPO has decided this in its decision (Ref.: 32 783 C) and clearly sees the word “Malle” as a geographical reference to the island of Mallorca.
What to do in case of a warning?
As long as the trademark protection for malls continues to exist, a warning notice is legal and must always be observed. However, we would like to point out that trademark protection always refers to commercial use. The purely private use of the terms “Malle” can therefore not be subject to a warning.
In addition, the term “Malle” is the subject of pending proceedings. All the more reason for us to recommend the advice of an experienced lawyer for warning law, as our law firm is happy to offer, should you receive a warning and a demand for payment.
Decision of EUIPO Az.: 32 783 C