The German Federal Patent Court and the changing principles of morality

Some surprising news - well, to this prudish Kat anyway - come from the German Federal Patent Court (Bundespatentgericht) which has decided that the trade mark "F*CKEN" (register entry shown to the left in prudishly small print) can be registered for beverages. The German word is similar to the English word so that I do not believe anyone will need a translation. The German Patent and Trademark Office (DPMA) had initially (and in this Kat's view rather not surprisingly) refused registration of the mark as being contrary to public policy or to accepted principles of morality.

On appeal, the Federal Patent Court was a lot more open-minded, shall we say. The judges held that due to the increasing liberalisation of the general public's views on conventions and principles of morality the mark "F*CKEN" did not affect the general public's moral sensitivities in a completely intolerable way - with the general public being the relevant consumers of beverages in this case. The judges would however draw a line and not accept trade marks for registration that were more than of mere bad taste but which contained an additional sexual meaning that was massively discriminatory. For example: gender specifically discriminatory and/or marks which affect human dignity or which could at least seriously be interpreted as having such a meaning

The word "F*CKEN" however was gender-neutral, the judges held, and as such not one-sidedly discriminatory. Furthermore, the word was widely used in everyday language and was no longer sexually provocative even though the word "F*CKEN" was part of "vulgar language" and not word of "good taste". Diligently conducting further research, the court also found 67 phonebook entries for name "F*cken" within Germany and stressed that the word could be found in dictionaries. In addition, the word "F*CKEN" was used in critically acclaimed film titles, TV programmes and book titles, such as "Shoppen & F*cken" and "F*ckende Fische" (see left). The judges also pointed out that the word was included in the title of a theatre play ("Mesalliance aber wir f*cken uns prächtig", in English: "Mesalliance but we are f*cking happily") written by the critically acclaimed author Werner Schwab and this play had been shown on German theatre stages. In light of this the DPMA's refusal had to be reversed.

A rather progressive court that clearly did all the background research… Merpel rather enjoyed reading the decision and will now do some research of her own, she is in particular interested in "F*ckende Fische", age restriction 12 years. She wonders for how long the DPMA's trade mark register will retain the same age restriction.

Case reference: 26 W (pat) 116/10 of 3 August 2011.

To read this decision in its entirety, please click here.

Zappanale dispute and Lacoste writing to the police

German magazine Der Stern reports on the next round in the ongoing dispute between the Zappa Family Trust and fans of cult musician Frank Zappa over the use of the word mark ZAPPA, registered as a Community trade mark.

The Trust has been trying to prevent the Zappanale, an annual music festival organised of Zappa fans that involves many uses of the Zappa name and image - on the basis of that registered Community mark. However, it transpired that the Trust had only used the word "Zappa" as part of the "official" Zappa website URL, which was operated from the US. Reversing a decision of the Regional Court of Düsseldorf, the Higher Regional Court of Düsseldorf (20 U 48/09) held that this use did not amount to genuine use of the trade mark (Article 15(1) CTMR). The court nonetheless stressed that use of a mark in a domain name as such may be sufficient for constituting genuine use - just not in this case because the public would consider the use of the word Zappa as a general descriptive reference and would not understand it as a reference to the trade mark owner.

For an in-depth analysis of this case, this Kat recommends Guido Westkamp’s current intelligence note published in JIPLP: “Personality trade marks and their limits: Frank Zappa Family Trust Inc. v Arf e.V.”


According to the latest Stern report, the Higher Regional Court had also held that the Zappanale music festival could still be held and that the Zappanale organizers were allowed to use the word mark Zappa, run their own Zappanale website and sell Zappanale merchandise. Finally, the Higher Regional Court ruled that no further appeal in this matter was allowed. Undeterred, Frank Zappa’s widow, Gail Zappa, who had sought damages from the Zappanale organisers, which the court had also denied, took the matter to the German Federal Supreme Court filing an appeal against the Higher Regional Court’s denial of leave to appeal. The German Federal Supreme Court agreed with Mrs Zappa, even though Der Stern did not report on the reasons given by the court. All we now for now is that the legal dispute surrounding the Zappanale will continue.


And now for something very different: eagle eyed IPKat readers already noticed in July (see the IPKat report here) that Norwegian mass killer Anders Breivik had been portrayed in several mass circulation publications wearing a garment bearing the Lacoste crocodile. The BBC now reports that Lacoste appears to have taken the unusual step to ask the Norwegian police to prevent mass killer Anders Breivik wearing the brand in court after he allegedly even claimed Lacoste was his favourite brand... not the kind of endorsement any brand owner would wish for.

BGH on the use of a well-known car maker’s trade mark in advertisements for a garage business

The German Federal Supreme Court’s (Bundesgerichsthof, “BGH") First Civil Senate on 14 April 2011 (case reference: I ZR 33/10) had to decide on a case concerning the use of a well-known car maker’s device mark in advertisements for an independent garage business. The facts of this case are reminiscent of the facts in the ECJ’s famous BMW/Deenik decision of 1999 (case-63/97). Please find this Kat's translation and summary of the BGH’s press release of 19 April 2011 below.

The claimant, the well-known German manufacturer Volkswagen AG („VW“), is the proprietor of a device trade mark which depicts the VW logo in a circle and which covers, inter alia, “cars” and “car repair and maintenance”. The defendant, ATU Auto-Teile-Unger Handels GmbH & Co. KG (“ATU”), owns several hundred independent (as in: unrelated to a specific car brand) garages.

VW took objection to the defendant’s use of the VW device mark in ATU’s advertisements for ATU’s maintenance and repair services in relation VW motor cars. The first instance court, the Regional court of Hamburg (LG Hamburg, decision of 21 February 2008, case reference: 315 O 768/07) and on appeal the Higher Regional court of Hamburg (OLG Hamburg, decision of 16. December 2009, case reference: 5 U 47/08) both decided in VW’s favour.

 The BGH confirmed the lower courts' decisions on ATU’s further appeal. The BGH took the view that ATU’s use was infringing use of the claimant’s registered device trade mark. In its advertisements for repair works of VW cars, the defendant had used a device trade mark that was identical to the claimant’s device mark for identical services. By doing so the defendant had infringed the claimant’s trade mark since the use of the well-known logo resulted in an image transfer which weakened VW’s trade mark.

Are you now wondering 'but what about the ECJ’s guidance in BMW/Deenik?', since the ECJ appeared to have taken a perhaps more liberal view back in 1999? While BMW/Deenik is not expressly mentioned in the BGH’s press release, the VW/ATU decision is clearly an interpretation of the former and this Kat hence holds any bet that BMW/Deenik is discussed in much detail in the grounds of VW/ATU which are yet unavailable. In the meantime, however, the BGH’s press release tells us the following: while trade mark law provides that a trade mark proprietor cannot prohibit a third party from using the trade mark where it is necessary to indicate the intended purpose of a service provided the third party uses the trade mark in accordance with honest practices in industrial or commercial matters. The BGH decided that in this particular case these requirements were not met in the case of ATU’s use of the VW logo since ATU could have just as well (“ohne weiteres”) used the claimant’s word marks “VW” or “Volkswagen” to describe its services and was not dependant on the to use the device mark.

Merpel now muses whether this decision implies that the advertising function of a device mark could be more worthy of protection than the advertising function of a mere word mark? Also, what would happen if the claimant had only owned a device mark without a word element or vice versa? The answers to these (and other) questions will (hopefully) be in the grounds of the decision and this Kat is very keen to see the BGH’s interpretation of “where it is necessary to indicate the intended purpose of a product or service”, (see also Article 6 TM Directive). For the purposes of informing consumers in an advertisement, use of the word mark itself will in most cases suffice and it will not be “necessary” to use the device mark. Most notably the BGH’s press release states that “in this particular case” use of the device mark was not necessary. It does not state that use of a device mark in advertisement can never be necessary. Some German observers have already criticised that this decision appears to favour brand-associated/authorised garages over independent garages. We will be able to judge once the full decision is out...

The court’s press release of 19 April 2011 can be retrieved by clicking here.

German Federal Patent Court decides in Neuschwanstein castle trade mark dispute

News in the trade mark dispute surrounding the German castle Neuschwanstein (see the IPKat's report here) .

By way of reminder: the Bavarian Castle Department (which is part of the Bavarian state government)has the task of regulating the souvenir trade connected to the famous Bavarian fairy tale castle and its surrounding area and registered the word mark "Neuschwanstein" in 2005. The German Federal Association Bundesverband Souvenir Geschenke Ehrenpreise e.V. (BSGE) - which describes itself as "a network of producers, wholesalers, exporters, retailers and trade representatives from the souvenir, sports clubs, trophy and festive items (industry)" - objected to this. Arguing that the Bavarian Castle Department's trade mark registration was akin to "censorship" of the Neuschwanstein souvenir trade, the BSGE filed for an invalidity of this mark at the DPMA. The DPMA (see IPKat report here) decided in the BSGE's favour and invalidated the mark, according to media reports, the DPMA found that "Neuschwanstein" was an "often used", non-distinctive term" and thus not capable to indicate trade origin of the goods and services marketed under the sign.

The German Federal Patent Court has now decided this matter and issued a press release confirming that it has upheld the DPMA's decision to cancel the "Neuschwanstein" trade mark. In its press release of 8 February 2011 concerning "Neuschwanstein" (case reference 25 W (pat) 182/09 of 4 February 2011) the court has provided the following information which this Kat has translated and summarised below.

The sign "Neuschwanstein“had been registered as a trade mark in 2005 for a multitude of goods and services. On 20 November 2007 the German Patent and Trademark Office decided on an invalidity application concerning this mark holding that the mark should be invalidated because it fell foul of § 8 (2) No. 1 German Trademarks Act (MarkenG) since it had lacked distinctiveness at the time of registration and still lacked distinctiveness now.

Upon appeal, the 25th Senate of the German Federal Patent Court upheld this decision and, inter alia, decided that the term "Neuschwanstein" described the castle Neuschwanstein which was commissioned by Kind Ludwig II in the municipality of Schwangau in the state of Bavaria with the castle being a world famous landmark of high (cultural-)historical importance.

As regards to services such as "travel services; catering/hospitality services and accommodation services", the term "Neuschwanstein" does not qualify for trade mark registration since the term could be seen as describing the characteristics of the services in the sense of § 8 (2) No. 2 MarkenG, that is their intended purpose or the geographical origin of rendering the services.

Designations of well-known tourist attractions such as "Neuschwanstein" furthermore lack the necessary distinctiveness under § 8 (2) No. 1 MarkenG concerning such goods that are usually offered in the proximity of such tourist destinations as souvenir articles or to satisfy the demands of tourist with regard to foods, drinks or further articles. This equally applies to services that are usually rendered and offered in a close proximity or in the context of such tourist attractions.

The court stressed that the term "Neuschwanstein" not only described a tourist sight but also a building that is a significant part of the national cultural heritage. The judges further held that designations of cultural sights that are of high importance and/or that are part of the national or international world cultural heritage are common property and as such cannot be monopolised or commercialised through trade mark laws. The court added that these sights usually are not distinctive enough for trade mark registration in the sense of § 8 (2) No. 1 MarkenG, even without a factual reference to claimed goods and services

Given that several aspects of this decision have fundamental importance, the Federal Patent Court allowed a further (partial) appeal to the German Federal Supreme Court (Bundesgerichtshof). On balance, this Kat believes that the court got it right but cannot help but thinking that the general idea of wanting to control the souvenir output surrounding the Neuschwanstein castle is not a bad one. How about having some kind of licensing committee when it comes to merchandise of such historical sights. Merpel, who likes her newly bought Neuschwanstein t-shirt (left), disagrees and thinks that this German Kat is nothing but a snob.... why not let the tourists decide what the want to spend their money on, rather than the Bavarian state?

Case reference : Bundespatentgericht, 25 W (pat) 182/09, delivered on 4 February 2011.

The court's press release can be found here.
The decision can already be retrieved in its entirety (German, PDF) by clicking here.