The trademark protection for the term “ProContact” as trademark for apps was rejected before the German BPatG. The focus was on the broadly defined generic term and the question of whether the word creation ProContact is descriptive for Apps, although the brand terms ProFamila for family work and PRO WILDLIFE for animal protection are permitted.
That was the objection raised by the trade mark applicant in its appeal. It argued that the DPMA bears the burden of establishing the existence of absolute grounds for refusal. In the present case, however, the trade mark office had made mere speculations which were not sufficient to reject the application. Rather, it was necessary to break them down into their constituent parts in order to analyse them individually in a next step.
BPatG confirmed lack of distinctiveness
Although the Federal Patent Court (BPatG) accepted the appeal, it confirmed the decision and the trademark refusal by the DPMA (25 W (pat) 518/19). The BPatG ruled that the registration of the term “ProContact” as a trade mark for apps was precluded by the ground for refusal of lack of distinctiveness under § 8 (2) No. 1 German MarkenG for the goods claimed in nice-class 9.
The court explained that terms which the relevant public associates only with a descriptive content in the foreground in connection with the goods and services claimed are devoid of distinctive character and cited ‘Postkantoor’ and ‘FUSSBALL WM 2006’ as examples of trade marks which were also refused for this reason. In addition, the term ‘ProContact’ is a direct indication of the intended purpose and scope of the apps claimed.
“Pro” has many meanings in German
The BPatG’s comments on word marks containing the word element ‘pro’ are interesting.
The word “Pro” has many different meanings in German, explained the BPatG, and mentioned among other things : as a short word “Profi”, as an adverb “for”, as a preposition “per” and as an amplifier in word combinations to express a positive attitude towards the following basic word (pro-European = Europe-friendly etc.).
Company names may have identifying character
In addition, the preposition “Pro” is often used by organisations, associations or initiatives of a (socio)political nature, which thus already document in their name in which direction they are committed or what they are working for (the court mentioned “ProFamilia”, “PRO WILDLIFE”, “Pro Tierschutz”, “ProVegan Stiftung” as examples). These designations have an identifying character, but they are allowed to do so according to the rules for Company names and corporate designations in the sense of § 5 Abs. 2 MarkenG.
General Generic term ‘computer programs in the form of apps’
The BPatG – unlike the DPMA – did not consider it likely that consumers would be able to understand the term ‘ProContact’ applied for to any significant extent in connection with the goods claimed in the sense of ‘professional contact’. Nevertheless, the court added that an understanding of the term ‘for the management of contact details’ is very close to that corresponding product context.
And since the chosen general generic term of the trademark application “computer programs in the form of apps” had been broadly defined, the term ‘ProContact’ was descriptive of the goods claimed. The generic term ‘computer programs in the form of apps’ also includes ‘contact management apps’, which must be taken into account here, according to the BPatG.
German Consumers are used to a language mix
Moreover, the average reasonably consumer in Germany is accustomed to being constantly confronted in advertising with new and not always grammatically correct terms which are intended to convey to him only factual information in a memorable form, the BPatG stated, in particular in English or mixed with English terms. A corresponding language mix as such could therefore generally no longer be perceived as unusual and could not be understood as characteristic and distinctive for this reason alone.
Find more on the subject of IP rights for apps and software
You are welcome to read more of our articles on the subject of apps and software:
- Huawei ARK OS applies to register its own operating system as a word mark in Germany
- Generic term ‘computer software’: ECJ in Sky vs. SkyKick case
- AI patents in GER and Europe
- Comparative study EPO and CNIPA: computer-implemented inventions
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Sources:
Judgement of BPatG ‘ProContact’ for Apps, 25 W (pat) 518/19
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